Ex Parte Mostad et alDownload PDFPatent Trial and Appeal BoardOct 30, 201410313761 (P.T.A.B. Oct. 30, 2014) Copy Citation 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. 10/313,761 12/06/2002 Matthew A. Mostad 886-468 9210 39600 7590 10/30/2014 SOFER & HAROUN LLP. 215 Lexington Avenue, Suite 1301 NEW YORK, NY 10016 EXAMINER CHORNESKY, ADAM B ART UNIT PAPER NUMBER 3688 MAIL DATE DELIVERY MODE 10/30/2014 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 MATHEW A. MOSTAD, DAVID W. CAMARILLO, AND KAREN L. JOHNSON ____________________ Appeal 2012-005710 Application 10/313,7611 Technology Center 3600 ____________________ Before BIBHU R. MOHANTY, NINA L. MEDLOCK, and BRADLEY B. BAYAT, Administrative Patent Judges. BAYAT, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal 35 U.S.C. § 134(a) from the Examiner’s final rejection of claims 1–16, 18–36, 38–50, 52–68, 70–88, 90–102 and 104– 108. We have jurisdiction under 35 U.S.C. § 6(b). STATEMENT OF THE DECISION We AFFIRM.2 1 The real party in interest, as identified by Appellants, is Grape Technology Inc. (Br. 2). 2 Our decision references Appellants’ Appeal Brief (“Br.,” filed Sept. 8, 2011), and the Examiner’s Answer (“Ans.,” mailed Nov. 28, 2011). Appeal 2012-005710 Application 10/313,761 2 THE CLAIMED INVENTION The claimed invention is directed to a system and method for offering information assistance including providing promotional information concerning desired goods or services (Spec. page 1, lines 3–5). Claim 1 reproduced below, is illustrative of the subject matter on appeal. 1. A method for use in an information assistance service, comprising: storing connection information concerning at least one entity related to selected goods or service, the connection information being stored in association with data concerning a promotion by the at least one entity; receiving a call from a caller, the call including a request for information concerning one or more entities related to the selected goods or service; retrieving the connection information, along with the data, in response to the request; retrieving a profile associated with the caller; and conveying at least the data concerning a promotion to the caller in a manner specified in said profile as defined by said caller. THE REJECTIONS The following rejections are before us for review: 1. Claims 1–16, 18–36, 38–50, 52, 105 and 106 are rejected under 35 U.S.C. § 101. 2. Claims 1–8, 11–14, 16, 18–28, 30–34, 36, 38–42, 45–48, 50, 52–60, 63– 66, 68, 70–80, 83–86, 88, 90–94, 96–100, 102, and 104–108 are rejected under 35 U.S.C. § 102(b) as being anticipated by Katz (U.S. 6,055,513, iss. April 25, 2000). Appeal 2012-005710 Application 10/313,761 3 3. Claims 9, 10, 15, 29, 35, 43, 44, 49, 61, 62, 67, 81, 82, 87, 95, and 101 are rejected under 35 U.S.C. § 103(a) over Katz and McDowell (US 2002/0035605 A1, pub. March 21, 2002). FINDINGS OF FACT We have determined the findings of fact in the Analysis section below are supported at least by a preponderance of the evidence.3 ANALYSIS Rejections under 35 USC § 101 Claims 1–16, 18–36, 38–50, 52, 105 and 106 The Examiner rejected claims 1–16, 18–36, 38–50, 52, 105 and 106 under 35 USC § 101 as being directed to non-statutory subject matter. In particular, the Examiner determined that the claims are directed to an abstract idea and lack sufficient recitation of a machine or transformation (Ans. 4–11, 43–46). In response, Appellants argue that the Examiner erred in rejecting claims 1, 19 and 39 as being unpatentable subject matter because directory assistance patents have been long issued, receiving or handling a call at a minimum requires a machine, and the storage of data implicitly requires a database and processor (Br. 12–17). Subsequent to the filing of briefs in this appeal, the Supreme Court in Alice Corp. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014), reiterated the framework set out previously in Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289 (2012), “for distinguishing patents that claim 3 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for proceedings before the Patent Office). Appeal 2012-005710 Application 10/313,761 4 laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of those concepts.” Alice, 134 S. Ct. at 2355. The first step in the analysis is to “determine whether the claims at issue are directed to one of those patent-ineligible concepts.” Id. If they are directed to a patent-ineligible concept, the second step in the analysis is to consider the elements of the claims “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, 132 S. Ct. at 1297). In other words, the second step is to “search for an ‘inventive concept’––i.e., 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.” Id. (brackets in original) (quoting Mayo, 132 S. Ct. at 1294). Alice involved “a method of exchanging financial obligations between two parties using a third-party intermediary to mitigate settlement risk.” Alice, 134 S. Ct. at 2356. Like the method of hedging risk in Bilski v. Kappos, 561 U.S. 593 (2010) ––which the Court deemed “a method of organizing human activity”––Alice’s “concept of intermediated settlement” was held to be “‘a fundamental economic practice long prevalent in our system of commerce.’” Alice, 134 S. Ct. at 2356. Similarly, the Court found that “[t]he use of a third-party intermediary . . . is also a building block of the modern economy.” Id. “Thus,” the Court held, “intermediated settlement. . . is an ‘abstract idea’ beyond the scope of § 101.” Id. In this case, representative claim 1 is drawn to “[a] method for use in an information assistance service” including the steps of storing information related to promotions of goods or services, receiving a call request for Appeal 2012-005710 Application 10/313,761 5 information related to selected goods or services, retrieving the information in response to the request, retrieving a profile associated with the caller, and conveying the promotion information to the caller in a manner specified in the profile (Br. 23). Akin to Alice, the concept of product marketing and commercial advertising––the practice of communicating the value of a product and promotional information for the purpose of selling that product to a consumer is a fundamental, well known economic practice long prevalent in our system of commerce. Disseminating advertising and promotional information in business is a form of marketing communication used to drive audience behavior with respect to commercial offerings by persuading consumers to purchase products ––a building block of global commerce. Thus, marketing communication, like the concept of intermediated settlement, is an “abstract idea” beyond the scope of § 101. Having determined that the Appellants’ method claim is directed to a patent-ineligible concept, we must now consider whether the claim contains additional substantive limitations that narrow, confine, or otherwise tie down the claim so that, in practical terms, it does not fully cover the abstract idea itself. See Alice, 134 S. Ct. at 2357 (“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. [ ]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].’”) (internal citations omitted). Here, the Appellants argue that claim 1 requires a machine to occur because “[a]t a minimum, switch and telephone equipment are required” and “the storage of telephonic connection data all implicitly require a database (such as database Appeal 2012-005710 Application 10/313,761 6 226 of the specification) and additionally implicitly requires a processor” (Br. 14); however, claim 1 merely suggests the use of a communication device. The introduction of a generic element, such as a computer (processor) or storage medium (database), into a method, apparatus, or article claim, has been deemed insufficient by the Supreme Court to transform a patent-ineligible claim into one that is patent-eligible, and it fails to do so in this claim as well. See Alice, 134 S. Ct. at 2358. Further, the recited claim limitations, both individually and as an ordered combination, fail to transform the nature of the claim into a patent-eligible application. Therefore, independent claim 1 does not recite any limitation that, in practical terms, limits the scope of the claim so it does not fully cover the abstract idea itself. For the foregoing reasons, we sustain the Examiner’s rejection of claims 1–16, 18–36, 38–50, 52, 105 and 106 under 35 U.S.C. § 101, as directed to non-statutory subject matter. Rejections under 35 USC § 102(b) Claims 1–8, 11–14, 16, 18–28, 30–34, 36, 38–42, 45–48, 50, 52–60, 63–66, 68, 70–80, 83–86, 88, 90–94, 96–100, 102 and 104–108 Appellants argue independent claims 1, 19, 39, 53, 71 and 90 as a group (Br. 16). We select claim 1 as representative. The remaining claims stand or fall with claim 1. 37 C.F.R. §41.37(c)(1)(vii) (2011). We are not persuaded that the Examiner erred in rejecting claim 1 under 35 U.S.C. § 102(b) because Katz “includes the feature of an ‘upsell’ or promotion delivered to the customer” and is “silent with respect to a manner of delivery of the promotion as defined by the caller” (Br. 18–19). Appellants, in essence, contend that Katz does not teach or suggest Appeal 2012-005710 Application 10/313,761 7 “retrieving a profile associated with the caller, and conveying at least the data concerning a promotion to the caller in a manner specified in the profile as defined by the caller,” as recited in claim 1. Id at 20–22. Instead, the Examiner maintains the rejections of record and we agree with the Examiner that Katz teaches these features (Ans. 11–13, 46–48). Katz is directed to a method for effecting remote commerce by intelligently selecting and proffering products, services or information via a telephone, videophone or computer link to a user (Abstract). Katz discloses “caller identification data, such as ANI data, [] may be utilized by the control unit 100 to retrieve information from the database 98 particular to the customer 74” (17:47–50; see also Ans. 12). In fact, Katz discloses that “based upon historical factors for a specific customer, knowledge of a user’s possession, such as based upon a prior purchase, may be utilized in the proffer” (10:66–11:2, see also Ans. 11–12). Katz, thus, describes “retrieving a profile associated with the caller” as called for in claim 1. “Appellants [] acknowledge that the cited portion of Katz does appear to relate to a profile” but argue that Katz “is silent with respect to a manner of delivery of the promotion as defined by the caller” (Br. 19). During examination, “claims . . . are to be given their broadest reasonable interpretation consistent with the specification, and . . . claim language should be read in light of the specification as it would be interpreted by one of ordinary skill in the art.” In re Bond, 910 F.2d 831, 833 (Fed.Cir.1990). Limitations from the specification, however, may not be read into the claims. See In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989). Here, we agree with the Examiner that the limitation of “conveying at least the data concerning a promotion to the caller in a manner specified in Appeal 2012-005710 Application 10/313,761 8 said profile as defined by said caller,” as recited in claim 1, covers the Katz method when the claim language is construed as broadly as reasonable. Katz discloses various modes of communication (11:36–42, see also Ans. 13) and, as indicated by the Examiner, “[t]he manner in which the user initiates contact with the system is also significant and can be interpreted as the user’s preferred method of contact” (Ans. 47). Because the language of claim 1 does not specify how said manner of delivery is “defined by said caller,” we find that by “determining characteristics of the user based at least in part upon the communication between the user of the system and the electronic system, third, determining the mode of presentation for the user based at least in part on the determined characteristics of the user, and fourth, presenting the information to the user in the determined mode,” Katz teaches this limitation (11:45-55). In other words, the mode of presentation or manner of delivery is determined or defined by the characteristics or actions of the user, as proffered by the Examiner. In view of the foregoing, we sustain the Examiner’s rejection of claims 1–8, 11–14, 16, 18–28, 30–34, 36, 38–42, 45–48, 50, 52–60, 63–66, 68, 70–80, 83–86, 88, 90–94, 96–100, 102 and 104–108 under 35 U.S.C. § 102(b). Rejections under 35 USC § 103(a) Claims 9, 10, 15, 29, 35, 43, 44, 49, 61, 62, 67, 81, 82, 87, 95, and 101 Inasmuch as Appellants have relied upon arguments presented with respect to independent claims 1, 19, 39, 53, 71 and 90 (Br. 22), we sustain the rejection of claims 9, 10, 15, 29, 35, 43, 44, 49, 61, 62, 67, 81, 82, 87, 95, and 101 under 35 USC § 103(a) for the reasons set forth above. Appeal 2012-005710 Application 10/313,761 9 DECISION The Examiner’s rejection of claims 1–16, 18–36, 38–50, 52, 105 and 106 under 35 U.S.C. § 101 is affirmed. The Examiner’s rejection of claims 1–8, 11–14, 16, 18–28, 30–34, 36, 38–42, 45–48, 50, 52–60, 63–66, 68, 70–80, 83–86, 88, 90–94, 96–100, 102 and 104–108 under 35 U.S.C. § 102(b) is affirmed. The Examiner’s rejection of claims 9, 10, 15, 29, 35, 43, 44, 49, 61, 62, 67, 81, 82, 87, 95, and 101 under 35 U.S.C. § 103(a) 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). See 37 C.F.R. 1.136(a)(1)(iv). AFFIRMED Ssc Copy with citationCopy as parenthetical citation