Ex Parte Mabari

Patent Trial and Appeal Board

Nov 24, 2017

12968867 (P.T.A.B. Nov. 24, 2017)

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.
12/968,867 12/15/2010 DEBBIE R. MABARI 50607-00005 3183
25231 7590 11/28/2017
MARSH, FISCHMANN & BREYFOGLE LLP
8055 East Tufts Avenue
Suite 450
Denver, CO 80237
EXAMINER
RINES, ROBERT D
ART UNIT PAPER NUMBER
3624
NOTIFICATION DATE DELIVERY MODE
11/28/2017 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):
PTOMail @ mfblaw. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DEBBIE R. MABARI
Appeal 2016-0040721
Application 12/968,8672
Technology Center 3600
Before ANTON W. FETTING, BIBHU R. MOHANTY, and
ALYSSA A. FINAMORE, Administrative Patent Judges.
FINAMORE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant appeals from the
Examiner’s decision to reject claims 1—3, 5—10, 12—16, and 43—54. We have
jurisdiction under § 6(b). We AFFIRM.
1 Our Decision references Appellant’s Specification (“Spec.,” filed Dec. 15,
2010), Appeal Brief (“Appeal Br.,” filed July 28, 2015), Reply Brief
(“Reply Br.,” filed Mar. 3, 2016), and Declaration under 37 C.F.R. § 1.132
by Deb Mabari (“Mabari Decl.,” filed Jan. 9, 2015), as well as the
Examiner’s Final Office Action (“Final Act.,” mailed May 22, 2015) and
Answer (“Ans.,” mailed Jan. 21, 2016).
2 Appellant identifies Cody Consulting Group, Inc. as the real party in
interest. Appeal Br. 1.
Appeal 2016-004072
Application 12/968,867
SUBJECT MATTER ON APPEAL
The invention “relates generally to managing the development of
marketing communications by healthcare entities and pharmacy benefit
management companies, financial institutions, insurance companies, and
other highly regulated entities,” and, more particularly, to “improving
coordination and workflow in connection with such communications to
enhance effectiveness, accuracy, and regulatory compliance.” Spec. 1:14—
18. Claims 1 and 9 are the independent claims on appeal. Independent
claim 1, reproduced below, is illustrative of the claimed subject matter:
1. A method for use in developing marketing
communications for a healthcare entity, comprising the steps of:
a) establishing a computerized system for integrated
publication management;
b) receiving, through a graphical user interface of said
computerized system, inputs regarding a marketing
communications project to generate at least first and second
versions of a defined marketing communication directed to
consumers, wherein said computerized system generates said
first and second versions of said defined marketing
communication by:
identifying, based on said inputs, a template for said
marketing communication from a plurality of templates;
associating, based on said inputs, a first plurality of
rules with a plurality of rule insertion opportunities in said
template to create said first version of said defined
marketing communication, wherein said computerized
system uses each rule of said first plurality of rules to map
information from an asset of an asset library into a
corresponding rule insertion opportunity in said first
version of said defined marketing communication; and
associating, based on said inputs, a second plurality
of rules with said plurality of rule insertion opportunities
in said template to create said second version of said
defined marketing communication, wherein said
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computerized system uses each rule of said second
plurality of rules to map information from an asset of said
asset library into a corresponding rule insertion
opportunity in said second version of said defined
marketing communication, and wherein said first plurality
of rules is at least partially different than said second
plurality of rules; and
c) based on said inputs to said graphical user interface,
using said computerized system for:
1) determining a workflow path and a timeline for
generating, approving, producing, and delivering at least
said first and second versions of said defined marketing
communication; and
2) routing said marketing communications project
to each of a subset of service groups of said healthcare
entity that are required to carry out said workflow path
over said timeline, wherein each service group contributes
defined functions to the processes of generating,
approving, producing, and delivering said defined
marketing communication, and wherein said subset of
service groups is selected from a master set of service
groups comprising a product group, a design group, a
copywriting group, a proofing and editorial group, a print
productions group, a translations group, a compliance
group, an operations group, an inventory management
group, and a customer service group.
REJECTION
The Examiner rejects claims 1—3, 5—10, 12—16, and 43—54 under
35 U.S.C. §101 as non-statutory subject matter.
ANALYSIS
In rejecting independent claim 1 under 35 U.S.C. § 101, the Examiner
analyzes the claim using the two-step framework set forth in Mayo
Collaborative Services v. Prometheus Laboratories, Inc., 132 S. Ct. 1289,
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Application 12/968,867
1296—97 (2012) and reiterated in Alice Corp. Pty. Ltd. v. CLS Bank
International, 134 S. Ct. 2347, 2355 (2014), which, in the first step,
considers whether the claim is directed to a patent-ineligible concept, e.g., an
abstract idea, and, if so, considers, in the second step, whether the elements
of the claim, individually and as an ordered combination, recite an inventive
concept—an element or combination of elements sufficient to ensure the
claim amounts to significantly more than the abstract idea and transform the
nature of the claim into a patent-eligible concept. Final Act. 3^4. Pursuant
to the first step of the analysis, the Examiner finds independent claim 1 is
directed to “organizing human behaviors to produce multiple versions of a
publication, i.e., an abstract concept of organizing activities.” Id. at 3.
Under the second step, the Examiner finds the claim does not recite
significantly more than the abstract idea because the additional elements
other than the abstract idea amount to no more than mere instructions to
implement the abstract idea. Id.
In regard to the remaining claims, the Examiner rejects independent
claim 9 for substantially the same reasons as independent claim 1. Id. at 4.
The Examiner rejects dependent claims 2, 3, 5—8, 10, 12—16, and 43—54
because the recited limitations fail to establish that the claimed invention is
not directed to an abstract idea. Id.
We have carefully considered Appellant’s arguments and evidence.
For the reasons discussed below, Appellant does not apprise us of error in
the Examiner’s rejection.
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Claims 1—3, 5—9, 12—16, and 54
As an initial matter, we are unpersuaded of error by Appellant’s
argument that independent claims 1 and 9 do not preempt the abstract idea,
i.e., would not impede innovation of producing multiple versions of a
publication. Appeal Br. 6—7; Reply Br. 9. Although preemption may be the
concern driving the exclusion of abstract ideas from patent-eligible subject
matter, preemption is not the test for eligibility. “The Supreme Court has
made clear that the principle of preemption is the basis for the judicial
exceptions to patentability. For 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) (citation omitted); see
also OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362—63
(Fed. Cir.), cert, denied, 136 S. Ct. 701 (2015) (“And that the claims do not
preempt all price optimization or may be limited to price optimization in the
e-commerce setting do not make them any less abstract.”).
Turning to Appellant’s arguments under the § 101 analysis, Appellant
argues “organizing human behaviors to produce multiple versions of a
publication” is not the same or even similar to any of the concepts the courts
have deemed to be abstract ideas. Appeal Br. 6, 7; Reply Br. 2—3. We
disagree.
As set forth above, the Examiner finds “organizing human behaviors
to produce multiple versions of a publication” is an abstract concept of
organizing activities. Final Act. 3. Indeed, courts have deemed certain
methods of organizing human activity to be abstract ideas, such as
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Application 12/968,867
“transaction performance guaranty,”3 “budgeting,”4 “filtering content,”5 and
“collecting data, recognizing certain data within the collected data set, and
storing the recognized data in a memory.”6 Like these concepts, the concept
of “organizing human behaviors to produce multiple versions of a
publication” is a long-standing practice performed by humans. See, e.g.,
BASCOM, 827 F.3d at 1348 (“We agree with the district court that filtering
content is an abstract idea because it is a longstanding, well-known method
of organizing human behavior.”). As such, we see no meaningful distinction
between the concept of “organizing human behaviors to produce multiple
versions of a publication” and other methods of organizing human activities
held to be abstract ideas.
After considering Appellant’s arguments pursuant to the first step of
the patent-eligibility analysis, we are not persuaded that the Examiner erred
in finding independent claims 1 and 9 are directed to the abstract idea of
“organizing human behaviors to produce multiple versions of a publication.”
Accordingly, we turn to Appellant’s arguments under the second step.
Appellant contends the independent claims include additional steps
that transform the abstract idea of “organizing human behaviors to produce
multiple versions of a publication” into an inventive application because
they improve existing technological processes for doing the same.
3 buySAFEInc. v. Google, Inc., 765 F.3d 1350, 135A-55 (Fed. Cir. 2014).
4 Intellectual Ventures ILLC v. Capital One Bank (USA), 792 F.3d 1363,
1367-68 (Fed. Cir. 2015).
5 BASCOM Global Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d
1341, 1348 (Fed. Cir. 2016).
6 Content Extraction & Transmission LLC v. Wells Fargo Bank, N.A., 116
F.3d 1343, 1347 (Fed. Cir. 2014).
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Appeal Br. 8—10; Reply Br. 4—11. According to Appellant, before the
present invention, multiple healthcare entity groups were utilized to
generate, approve, produce, and deliver various versions of a marketing
communication in separate respective sequential processes. Appeal Br. 9
(citing Mabari Decl. Ill; Spec. 2:16—27). In doing so, these healthcare
entity groups used computers with word processing functionality, document
management software, and project management software. Id. (citing Mabari
Decl. 110). In contrast to sequential processes using various computer
programs, Appellant asserts that the claimed invention accomplishes distinct
but interrelated processes and facilitates compliance with federal, state, and
other regulations, provides timely and accurate creation of versions of
healthcare entity marketing communications based on inputs to a GUI, and
determines an appropriate workflow path for circulating the versions in
parallel based on the inputs. Id. at 9-10; Reply Br. 6, 10-11.
Although we appreciate that the claimed invention is an improvement
to the traditional method for creating marketing communications for a
healthcare entity, creating marketing communications is not a technological
process. Ans. 7—8. Despite the fact that computers are used in the
generation of marketing communications, the creation of marketing
communications is a marketing processes, which is untechnical. Id. at 10.
As such, we disagree with Appellant that the claimed invention improves
existing technological processes.
Furthermore, even if generating distinct versions of a marketing
communication by identifying a structured template, using rules to map
assets from an asset library to insertion opportunities based on inputs,
determining a workflow path, and routing the versions to various groups of a
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healthcare entity distinguish independent claims 1 and 9 from those in
SmartGene v. Advanced Biological Laboratories, S.A., 555 F. App’x 950
(Fed. Cir. 2014) and Digitech Image Technologies, LLC v. Electronics for
Imaging, Inc., 758 F.3d 1344 (Fed. Cir. 2014), respectively (Appeal Br. 11—
13), Appellant does not explain, and we fail to see, how these features of the
claimed invention improve the computer technology used in performing
these steps or address a problem arising in the realm of computers. To the
contrary, the invention set forth in each of the independent claims is simply
the generic computer implementation of an improved process for generating
marketing communications, which is insufficient to confer patent-eligibility.
See DDR Holdings LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed.
Cir. 2014) (“[TJhese claims 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.”); see also
Spec. 4:8—9 (“The method involves establishing a computerized system for
integrated publication management.”).
Appellant also argues independent claims 1 and 9 recite an inventive
concept because, like the claims in DDR Holdings, the independent claims
do not broadly and generically claim the use of a computer to perform an
abstract idea with insignificant added activity and does not preempt every
application of generating different versions of a marketing communication
for a healthcare entity. Appeal Br. 14. We, however, see no parallel
between the independent claims and the claims in DDR Holdings.
In DDR Holdings, the Federal Circuit determined that the claims
addressed the problem of retaini ng website visitors who, if adhering to the
routine, conventional functioning of Internet hyperlink protocol, would be
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transported instantly away from a host’s website after clicking on an
advertisement and activating a hyperlink. 773F.3datl257. The Federal
Circuit, thus, held that the claims were directed to statutory 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,” Id.
In contrast, the claimed invention does not address a technical
problem, nor is the claimed invention rooted in computer technology.
Ans. 9. Rather, as set forth above, the claimed invention addresses a
marketing problem. Consequently, Appellant’s reliance on DDR Holdings
does not persuade us of Examiner error.
Appellant further argues the Examiner erred in finding that the
additional elements of independent claims 1 and 9 are conventional and
routine steps known in the industry. Appeal Br. 10—11 (citing Mabari Decl.
10-12). To the contrary, Appellant asserts the Examiner has allowed the
claims under 35U.S.C. §§ 102 and 103. Id. at 11. Appellant’s arguments
do not apprise us of error.
Notwithstanding that ‘“the § 101 patent-eligibility inquiry and, say,
the § 102 novelty inquiry might sometimes overlap’ ... a claim for a new
abstract idea is still an abstract idea.” Synopsys, Inc. v. Mentor Graphics
Corp., 839 F,3d 1138, 1151 (quoting Mayo, 132 S. Ct. at 1304). The
question in the second step of the patent-eligibility analysis is not whether an
additional feature is novel, but whether the implementation of the abstract
idea involves “more than the performance of ‘well-understood, routine,
[and] conventional activities previously known to the industry.”’ Content
Extraction, 776 F.3d at 1347—48 (quoting Alice, 134 S. Ct. at 2359). Here,
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Appellant does not explain how the implementation of the claimed invention
requires something apart from generic computing components and generic
comp uter functionality „
In view of the foregoing, Appellant does not apprise us of error in the
Examiner’s determination that independent claims 1 and 9 are directed to
non-statutory subject matter, and we sustain the rejection of independent
claims 1 and 9 under 35 U.S.C. § 101. Appellant relies on the same
arguments as the independent claims for dependent claims 2, 3, 5—8, 10, 12—
16, and 54 (Appeal Br. 15), and we similarly sustain the rejection of these
dependent claims.
Claims 43—53
Appellant contends claims 43 and 49 recite additional elements
amounting to significantly more than the abstract idea because they recite
specific details regarding the non-routine and technologically-improved
manner in which the claimed computerized system generates the first and
second versions of the marketing communication. Appeal Br. 15. Appellant
similarly asserts that claims 44-48 and 50—53 more specifically define the
assets, rules, variables, etc. required to build the first and second versions.
Id. Although we agree with Appellant that claims 43—53 specifically define
how the first and second versions of the marketing communication are
generated, Appellant does not explain, and we fail to see, how these specific
features improve the computer technology or address a problem arising in
the realm of computers. Consequently, Appellant does not apprise us of
error in the Examiner’s finding that the claims do not amount to significantly
more than the abstract idea.
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In view of the foregoing, Appellant does not apprise us of error in the
Examiner’s determination that claims 43—53 are directed to non-statutory
subject matter. We, therefore, sustain the rejection of claims 43—53 under
35 U.S.C. § 101.
DECISION
The Examiner’s decision to reject claims 1—3, 5—10, 12—16, and 43—
54 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). 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED
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