Ex Parte Newman et al

Patent Trial and Appeal Board

Jan 31, 2018

13087053 (P.T.A.B. Jan. 31, 2018)

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.
13/087,053 04/14/2011 Alan B. NEWMAN CITI0267-US-CON 5404
75127 7590 02/02/2018
DENTONS US LLP (CITI CUSTOMER NUMBER)
ATTN: Eric Sophir
P.O. BOX 061080
CHICAGO, IL 60606-1080
EXAMINER
WALKER III, GEORGE H
ART UNIT PAPER NUMBER
3683
NOTIFICATION DATE DELIVERY MODE
02/02/2018 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):
eric. sophir @ dentons. com
patents.us@dentons.com
#sg.citi-docket@dentons.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ALAN B. NEWMAN and NOOR A. MENAI
Appeal 2016-006297
Application 13/087,0531
Technology Center 3600
Before ELENI MANTIS MERCADER, LARRY J. HUME, and
SCOTT B. HOWARD, Administrative Patent Judges.
HOWARD, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Final Rejection
of claims 1,10, and 20—31, which constitute all of the claims pending in this
application. Claims 2—9 and 11—19 have been cancelled. App. Br. 20, 21
(Claims App’x). We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 Appellants identify Citicorp Development Center, Inc. as the real party in
interest. App. Br. 1.
Appeal 2016-006297
Application 13/087,053
THE INVENTION
The disclosed and claimed invention is directed to a system and
method for “analyzing marketing efforts. More particularly, the present
invention relates to a system and method for evaluating the cause and effect
of advertising and marketing programs using card transaction data.” Spec.
13.
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A system comprising:
a transaction database configured to store card
transaction data regarding purchases made with a transaction
card at a point-of-sale received from a transaction card issuer
company and to filter the input transaction data based on
predetermined filtering business rules to determine an
information need requested by a client computing device;
a customer information database configured to store
information identifying card holders;
wherein the transaction database is coupled to and
interacts with the customer information database to associate
the identification information with the card transaction data;
a market insights resources server comprising;
an analytical module coupled to and interacting
with the transaction information database and the
customer information database;
wherein analysis by the analytical module includes
summarizing detailed transaction data on the customers,
linking customer data with external datasets, and
clustering similar customers into a plurality of segments,
wherein each segment comprises customers having at
least one common attribute and wherein each segment
comprises an identified buying behavior;
a reporting module configured to provide a report
based on the analysis of the analytical module, including
identifying a sales effect of a campaign, market share
based on a geographic segment, demographics of a
2
Appeal 2016-006297
Application 13/087,053
company’s customers, or shopping habits of the
company’s customers;
a panel card component configured to generate a
questionnaire containing a plurality of questions that are
based on the information need requested by the client
computing device for completion on a website on a
customer computing device by a plurality of customers
who opted-in to respond to a questionnaire and are
selected for the questionnaire based upon a previous
transaction, wherein the questionnaire comprises a
plurality of questions associated with customer buying
behavior at the point-of-sale not limited to a single
transaction, wherein the panel card component is coupled
to the transaction database and the customer information
database which receive a response to the questionnaire
transmitted from the customer computing device; and
a value shopper component coupled to the
reporting module, the customer information database and
the transaction database and are configured to receive an
identification of potential customers based upon the
questionnaire, the response to the questionnaire, and the
report.
REFERENCES
The prior art relied upon by the Examiner as evidence in rejecting the
claims on appeal is:
Dejaeger US 6,456,981 B1 Sept. 24, 2002
Blume US 6,839,682 B1 Jan. 4, 2005
Boyd US 7,072,848 B2 July 4, 2006
Smith US 7,337,127 B1 Feb. 26, 2008
REJECTIONS
Claims 1, 10, and 20-31 stand rejected under 35 U.S.C. § 101 because
the claimed invention is directed to patent-ineligible subject matter. Final
Act. 5—6.
3
Appeal 2016-006297
Application 13/087,053
Claims 1, 10, and 20-31 stand rejected under pre-AIA 35 U.S.C.
§112 first paragraph as failing to comply with the written description
requirement. Final Act. 7.
Claims 1, 10, 20, 21, 24, 25, and 28—31 stand rejected under pre-AIA
35 U.S.C. § 103(a) as being unpatentable over Blume in view of Dejaeger
and Smith. Final Act. 8—19.
Claims 22, 23, 26, and 27 stand rejected under pre-AIA 35 U.S.C.
§ 103(a) as being unpatentable over Blume in view of Dejaeger, Smith and
Boyd. Final Act. 20—22.
ANALYSIS
We have reviewed the Examiner’s rejection in light of Appellants’
arguments that the Examiner erred. In reaching this decision, we have
considered all evidence presented and all arguments made by Appellants.
We are not persuaded by Appellants’ arguments regarding the rejections
under sections 101 and 112, first paragraph. However, we are persuaded by
Appellants’ arguments that the Examiner erred in rejecting the claims under
section 103 based on the current record.
Section 101 Rejection
Patent-eligible subject matter is defined in § 101 of the Patent Act,
which recites:
Whoever 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.
There are, however, three judicially created exceptions to the broad
categories of patent-eligible subject matter in § 101: laws of nature, natural
phenomena, and abstract ideas. Alice Corp. Pty. Ltd. v. CLS Bank Int 7, 134
4
Appeal 2016-006297
Application 13/087,053
S. Ct. 2347, 2354 (2014); Mayo Collaborative Servs. v. Prometheus Labs.,
Inc., 566 U.S. 66, 70-71 (2012). Although an abstract idea, itself, is patent-
ineligible, an application of the abstract idea may be patent-eligible. Alice,
134 S. Ct. at 2355. Thus, we must consider “the elements of each claim both
individually and ‘as an ordered combination’ to determine whether the
additional elements ‘transform the nature of the claim’ into a patent-eligible
application.” Id. (citing Mayo, 132 S. Ct. at 1297—98). The claim must
contain elements or a combination of elements that are “sufficient to ensure
that the patent in practice amounts to significantly more than a patent upon
the [abstract idea] itself.” Id. (citing Mayo, 132 S. Ct. at 1294).
The Supreme Court set forth a two-part “framework for distinguishing
patents that claim laws of nature, natural phenomena, and abstract ideas
from those that claim patent-eligible applications of those concepts.” Id. at
2355.
First, we determine whether the claims at issue are directed to
one of those patent-ineligible concepts. [Mayo,] 132 S. Ct., at
1296—1297. If so, we then ask, “[w]hat else is there in the
claims before us?” Id., at------- , 132 S. Ct., at 1297. To answer
that question, we consider the elements of each claim both
individually and “as an ordered combination” to determine
whether the additional elements “transform the nature of the
claim” into a patent-eligible application. Id., at------- , 132 S.
Ct., at 1298, 1297. We have described step two of this analysis
as a 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., at------- , 132 S. Ct., at
1294.
Alice, 134 S. Ct. at 2355.
“The ‘abstract idea’ step of the inquiry calls upon us to look at the
‘focus of the claimed advance over the prior art’ to determine if the claim's
5
Appeal 2016-006297
Application 13/087,053
‘character as a whole’ is directed to excluded subject matter.” Affinity Labs
of Tex. v. DirectTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016) (quoting
Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir.
2016)); see also Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed.
Cir. 2016). There is no definitive rule to determine what constitutes an
“abstract idea.” Rather, the Federal Circuit has explained that “both [it] and
the Supreme Court have found it sufficient to compare claims at issue to
those claims already found to be directed to an abstract idea in previous
cases.” Enfish, 822 F.3d 1327, 1334 (Fed. Cir. 2016); see also Amdocs
(Israel) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288, 1294 (Fed. Cir. 2016)
(explaining that, in determining whether claims are patent eligible under
§101, “the decisional mechanism courts now apply is to examine earlier
cases in which a similar or parallel descriptive nature can be seen—what
prior cases were about, and which way they were decided”).
The Examiner concludes the claims are directed to the abstract idea of
“providing marketing insights based upon transaction data and customer
questionnaire.” Final Act. 5; see also Ans. 5 (“As noted in the Final Action,
the independent claims are directed to providing marketing insights based
upon transaction data and customer questionnaire. This is a means of
organizing information through mathematical correlations and thus an idea
in itself and thus an abstract idea . . . .”). The Examiner further concludes
that “[t]his is not only a long-standing, fundamental economic practice
(merchants have long been analyzing who is buying what and asking about
customers’ preferences) but also employing mathematical algorithms to
manipulate existing information to generate additional information, and thus
an abstract idea.” Final Act 5; see also Ans. 6—7 (“Providing marketing
6
Appeal 2016-006297
Application 13/087,053
insights based upon transaction data and customer questionnaire is also a
method of organizing human activity because, like intermediated settlement
and risk hedging, receiving transaction and customer data, analyzing the
received data, generating marketing-related reports based on the analysis,
and generating a questionnaire are long-standing commercial practices and
thus comprise an abstract idea . . . Applying the July 2015 Guidelines,
the Examiner concludes the claims are similar to the claims in Planet Bingo,
LLC v. VKGS LLC, 576 Fed. Appx.1005 (Fed. Cir. 2014), CyberSource
Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372 (Fed. Cir. 2011)), and
In re Maucorps, 609 F.2d 481 (CCPA 1979). Ans. 6—7.
Appellants argue the claims are not directed to an abstract idea. App.
Br. 6—8; Reply Br. 4—8. Specifically. Appellants argue the claims “are
‘necessarily rooted in computer technology,’ as in DDR,[2] supra, because
they necessarily require a special-purpose computer rather than a generic
computer. Indeed, the fact that a claim can be implemented using generic or
general-purpose computer equipment is not conclusive in making a Section
101 rejection.” App. Br. 6. Replying on In reAlappat, 33 F.3d 1526, 1545
(Fed. Cir. 1994) (enbanc), Appellants argue because the claims “necessarily
require a special-purpose computer rather than a generic computer” and “[a]
specifically programmed general-purpose computer is in fact a special-
purpose computer, provided that the claim requires specific programming,”
the claims are not directed to an abstract idea. App. Br. 6.
Appellants also argue the Examiner erred because the Final Action did
not follow the July 2015 Guidelines, which, according to Appellants,
2 DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir.
2014).
7
Appeal 2016-006297
Application 13/087,053
“instruct that the Examiner is not to identify a claimed concept as an abstract
idea ‘unless it is similar to at least one concept that the courts have identified
as an abstract idea.’” App. Br. 8.
In the Reply Brief, Appellants argue, relying on Enfish,3 the claims
are not abstract because “the claims focus on the functioning of the
computing technology, instead of focusing on some pre-Internet process for
which the computing device just happens to be used as a tool for
implementation.” Reply Br. 4; see also id. at 6 (arguing “the claims are
intended to focus on the functioning of the computing technology, as
opposed to some pre-Internet business process”). Instead, Appellants argue
“the claims recite computer technology features that provide an improved
(more effective) system for analyzing card transaction data and evaluating
transaction data. In other words, the claims are not so much directed to
some broadly-stated idea implemented on a computer, but rather the claims
focus on the computer functioning.” Id. at 6.
We are not persuaded by Appellants’ arguments. Instead, we agree
with and adopt the Examiner’s findings and conclusion that the claims are
directed to an abstract idea. Specifically, Appellants’ reliance on Alappat is
misplaced as the Federal Circuit has held “that Alappat has been superseded
by Bilski [v. Kappos, 561 U.S. 593, 605-06 (2010)], and Alice.” Eon Corp.
IP Holdings LLC v. AT&T Mobility LLC, 785 F.3d 616, 623 (Fed. Cir.
2015).
3 Although Appellants did not provide a basis for making this new argument
in the Reply Brief, we find good cause to consider the argument in light of
the Federal Circuit issuing the Enfish decision in the period between the
opening and reply briefs. See 37 C.F.R. § 41.41(b)(2).
8
Appeal 2016-006297
Application 13/087,053
Nor are we persuaded by Appellants’ argument directed to the 2015
Guidelines. First, the USPTO guidelines are not legal requirements. Cf. In
re Fisher, 421 F.3d 1365, 1372 (Fed. Cir. 2005) (“The MPEP and
Guidelines ‘are not binding on this court.”’) (citations omitted). Instead, we
are bound by Supreme Court and Federal Circuit decisions construing the
scope of the judicial exception. Second, the Final Action was issued in June
2015, before the promulgation of the July 2015 Guidelines. Accordingly,
the Examiner could not have applied them in the Final Action. Third,
following the promulgation of the July 2015 Guidelines, the Examiner
followed them and identified cases in which the Federal Circuit found
similar claims to be patent-ineligible. Moreover, we are not persuaded by
Appellants’ arguments the Examiner erred in finding the claims in those
cases similar to the pending claims. Instead, we agree with and adopt the
Examiner’s determination that the claims do not more than recite routine
computer elements. See Ans. 3^4.
Finally, we are not persuaded by Appellants’ arguments that the
pending claims are similar to those found to be directed to patent-eligible
subject matter in Enfish and DDR. First, as our reviewing court held in
DDR, “not all claims purporting to address Internet-centric challenges are
eligible for patent.” 773 F.3d at 1258. As the Federal Circuit recognized:
For example, in our recently-decided Ultramercial4] opinion,
the patentee argued that its claims were “directed to a specific
method of advertising and content distribution that was
previously unknown and never employed on the Internet
before.” 772 F.3d at 714. But this alone could not render its
4 Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709 (Fed. Cir. 2014), vacated
and remanded, Wildtangent, Inv. v. Ultramercial LLC, 134 S. Ct. 2870
(2014) (remanding for consideration in light of Alice, 134 S. Ct. 2347).
9
Appeal 2016-006297
Application 13/087,053
claims patent-eligible. In particular, we found the claims to
merely recite the abstract idea of “offering media content in
exchange for viewing an advertisement,” along with “routine
additional steps such as updating an activity log, requiring a
request from the consumer to view the ad, restrictions on public
access, and use of the Internet.” Id. at 715—16.
Id. Because Appellants have merely identified routine additional steps, they
are insufficient to render the claims patent-eligible.
Moreover, we disagree with Appellants that the claims in this case are
directed to a computer-centric problem similar to that in DDR. In DDR, the
Court found that the claims “do not merely recite the performance of some
business practice known from the pre-Internet world along with the
requirement to perform it on the Internet. Instead, the claimed solution is
necessarily rooted in computer technology in order to overcome a problem
specifically arising in the realm of computer networks.” Id. at 1257. Unlike
the claims in DDR, we agree with and adopt the Examiner’s determination
that the claims in this case are merely adopting a pre-existing business
practice for use with computer technology.
Although Appellants state the claims are directed to computer
functions and not “to some broadly-stated idea implemented on a computer,”
Reply Br. 6, Appellants do nothing more than recite the claim language
without explaining how it is directed to computer functions. That is not
sufficient to show that the Examiner erred. Moreover, Appellants’ argument
is inconsistent with the language recited in the claims, which focuses on
results, and not how those results are achieved. See App. Br. 19-23 (Claims
App.). Although the claimed system and method may be more efficient than
prior art, non-computer solutions, that is not enough to make the claims
patent-eligible:
10
Appeal 2016-006297
Application 13/087,053
While the claimed system and method certainly purport to
accelerate the process of analyzing audit log data, the speed
increase comes from the capabilities of a general-purpose
computer, rather than the patented method itself. See Bancorp
Servs., L.L.C. v. Sun Life Assurance Co. of Can. (U.S.), 687
F.3d 1266, 1278 (Fed. Cir. 2012) (“[T]he fact that the required
calculations could be performed more efficiently via a computer
does not materially alter the patent eligibility of the claimed
subject matter.”).
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1095 (Fed. Cir.
2016).
Turning to step 2 of the framework, the Examiner also concludes the
claims do not recite something more than the abstract idea. Final Act. 5—6;
Ans. 8—9. Specifically, the Examiner determines the various elements cited
by Appellants are claimed and described “at a high level of generality which
may be implemented via a general purpose computer system and which
encompass elements that are well-understood, routine, and conventional.
Thus, the computing elements do not, in themselves or in combination,
amount to significantly more that the judicial exception.” Ans. 8.
Appellants argue the claims are directed to something more because
the claims do not monopolize or tie-up the abstract idea. App. Br. 8—10.
Appellants further asserts the claims are similar to example 23 of the July
2015 guidelines, which was deemed patent-eligible:
Similar to Example 23, claim 4 above, independent claims 1
and 10, when read as a whole, disclose numerous computing
elements that are specifically selected and integrated in select
ways to perform particular claim functions — which is
significantly more than the concept of “providing marketing
insights based upon transaction data and customer
questionnaire.”
11
Appeal 2016-006297
Application 13/087,053
App. Br. 12; see also Reply Br. 8—9. According to Appellants, the
combination “provides a more effective system and method for analyzing
card transaction data and evaluating the effect of marketing programs using
card transaction data.” Id. at 13.
We are not persuaded by Appellants’ arguments the Examiner erred.
Instead, we agree with the Examiner that the claims do not recite
significantly more than the abstract idea itself.
With regard to Appellants’ preemption argument, although the extent
of preemption is a consideration, the absence of complete preemption is not
dispositive. See, e.g., Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d
1371, 1379 (Fed. Cir. 2015) (“While preemption may signal patent ineligible
subject matter, the absence of complete preemption does not demonstrate
patent eligibility.”); Ultramercial, 722 F.3d at 1346 (“[T]he Supreme Court
has stated that, even if a claim does not wholly pre-empt an abstract idea, it
still will not be limited meaningfully if it contains only insignificant or token
pre- or post-solution activity—such as identifying a relevant audience, a
category of use, field of use, or technological environment.”) (citations
omitted). Accordingly, even if the claims do not—to use Appellants’
words—tie-up or monopolize the abstract idea, that alone is not enough to
render the claims patent-eligible.
Second, similar to the reasons discussed above regarding the abstract
idea, we are not persuaded by Appellants’ assertions that the claims are
similar to those found patent-eligible in Enfish and DDR. Although
Appellants recite the claim limitations, Appellants do not explain
persuasively how those elements are more than generic and conventional
computer elements that, when considered either individually and
12
Appeal 2016-006297
Application 13/087,053
collectively, are something more than the abstract idea. Using a “computer
server and code implemented in software”—a generic computer
component—to perform a method does not impart patentability. Our
reviewing court “found similar claims to be ineligible despite the recitation
of a general purpose computer or the Internet.” Versata Dev. Grp., Inc. v.
SAP Am., Inc., 793 F.3d 1306, 1334 (Fed. Cir. 2015) (collecting cases). As
in Versata, the claims here “do not improve some existing technological
process or solve some technological problem in conventional industry
practice.” Id. Similarly,
[T]he claims at issue are not rooted in computer technology to
solve a problem specifically arising in some aspect of computer
technology. Instead, the claims at issue are more like the
claims we summarized in DDR Holdings as insufficient to
reach eligibility—claims reciting a commonplace business
method aimed at processing business information despite being
applied on a general purpose computer.
Id.; see also CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366,
1373—77 (Fed. Cir. 2011) (merely using a computer readable medium is not
sufficient to transform an abstract idea to patentable subject matter); see also
Ultramercial, 772 F.3d 709 (finding a method for distribution of products
over the Internet directed to unpatentable under the Alice!Mayo framework).
Accordingly, we sustain the Examiner’s rejection of claims 1, 10, and
20-31 as directed to patent-ineligible subject-matter.
Section 112, First Paragraph Rejection
The Examiner finds the Specification does not provide written
description support for the “questions associated with customer buying
behavior at the point-of-sale” limitation recited in claims 1 and 10. Final
13
Appeal 2016-006297
Application 13/087,053
Act. 7.5 More specifically, the Examiner finds why the various paragraphs
cited by Appellants do not provide sufficient support for the limitation. Ans.
10-11.
Appellants assert the Examiner erred in rejecting the claims for a lack
of written description support. App. Br. 10. The entirety of Appellants’
assertion is as follows: “The specification also provides exemplary support
for ‘questions associated with customer buying behavior at the point-of-sale’
(POS) in at least paragraphs [0082], [0130], [0135], [0159], and [0164].” Id.
at 13; see also Reply Br. 9 (“With respect to the remaining and related
rejections under 35 U.S.C. § 112, Appellant reasserts the positions proffered
in the related portions of the Appeal Brief, and maintains that the features
recited by the claims are supported in the application as originally filed.”).
To satisfy the written description requirement, the disclosure must
reasonably convey to skilled artisans that Appellant possessed the claimed
invention as of the filing date. SeeAriad Pharms., Inc. v. Eli Lilly & Co.,
598 F.3d 1336, 1351 (Fed. Cir. 2010) (enbanc). Specifically, the
description must “clearly allow persons of ordinary skill in the art to
recognize that [the inventor] invented what is claimed.” Id. (alteration in
original) (quoting Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563 (Fed.
Cir. 1991)).
[T]he test requires an objective inquiry into the four comers of
the specification from the perspective of a person of ordinary
skill in the art. Based on that inquiry, the specification must
5 The Examiner also found that the Specification did not support the “client
computing device” limitation recited in the claims. Final Act. 7. The
Examiner withdrew that portion of the rejection in the Answer. Ans. 10.
Accordingly, we do not review that portion of the rejection in this Decision.
14
Appeal 2016-006297
Application 13/087,053
describe an invention understandable to that skilled artisan and
show that the inventor actually invented the invention claimed.
Id. The claimed invention need not be recited in haec verba in the original
specification in order to satisfy the written description requirement. Id. at
1352.
We are not persuaded by Appellants assertion that the Examiner erred.
Although Appellants cite to various paragraphs in the Specification as
support for the disputed limitation, Appellants do not explain how those
paragraphs provide a written description for the limitation. Nor do
Appellants address the Examiner’s findings in the Answer as to why those
paragraphs do not provide support. In light of the Examiner’s detailed
findings, which we agree with and adopt herein as our own, Appellants’ bare
assertion that a combination of various disparate paragraphs provide written
description support is not persuasive.
Accordingly, we sustain the Examiner’s rejection of claims 1, 10, and
20-31 under 35 U.S.C. § 112,11.
Section 103(a) Rejections
The Examiner finds Smith teaches “a panel card component
configured to generate a questionnaire containing plurality of questions that
are based on the information need requested by the client computing device
for completion on a website on a customer computing device by a plurality
of customers who opted-in to respond to a questionnaire and are selected for
the questionnaire based upon a previous transaction,” as recited in claim 1.
Final Act. 12—13; Ans. 13—14. Specifically, the Examiner construes the
limitation as requiring “the selection of customers that is based upon a
previous transaction and not the questionnaire as suggested by the
15
Appeal 2016-006297
Application 13/087,053
Appellant.” Ans. 13. The Examiner finds Smith teaches the selection of
customers for questionnaires based on the user profile and that the user
profile includes previous transactions:
Smith teaches that the selection of customers for the
context-specific surveys based upon the profile (col. 6, 48-54)
which includes purchasing history (col. 7, lines 32-33), and
purchasing history inherently includes previous purchase
transactions or it is not a purchasing history. Since the
selection is based upon the profile which includes previous
purchase transactions, the selection is based, at least in part, on
previous transactions.
Id. at 14.
Appellants argue the Examiner erred in finding Smith teaches the
disputed limitation. App. Br. 16. Specifically, Appellants argue Smith
teaches selecting people for questions, along with the content of the
questions, based on missing date in the user profile, not a previous
transaction:
Instead, Smith generates a questionnaire to complete a user
profile. As cited by the Examiner, Smith recites “user
registration includes the creation of a user profile, which is used
by the Web server to store data associated with the registered
user.” Col. 2, lines 23-25. “[T]he market researcher is
prompted to develop a context-specific survey question that
relates to the content, the answer to which supplies the deficient
data element. For example, if a user is browsing for a pair of
shoes, a question asking for the user’s shoe size (i.e., the
deficient data in this example) would appear to the user a
helpful shoe finding aid, while providing the deficient data
about the user.” Col. 6, line 61 - Col. 7, line 1 (emphasis
added). Creating a survey question based on a user profile that
contains deficient data (i.e., user’s shoe size) is not opting-in to
respond to a questionnaire based upon a previous transaction.
Thus, Smith recites responding to a questionnaire based on
16
Appeal 2016-006297
Application 13/087,053
data, which is deficient in the user’s profile, and not based on
previous transactions.
Id.', see also Reply Br. 10 (arguing that “Smith recites that the context
specific survey pertains to a deficiency in the user profile data of a particular
user. See e.g. Smith at col. 6, line 64-col. 7, line 1 (asking for a particular
user’s shoe size)”).
We are persuaded by Appellants’ arguments as the Examiner has not
identified sufficient evidence or provided sufficient explanation as to how
Smith teaches or suggests the disputed limitation. Although Smith teaches
that the selection for questions, along with the contents of the question, is
based on a portion of the user profile and that the user profile contains, inter
alia, prior purchase history, the Examiner has not shown sufficiently that
Smith teaches using the purchase history in selecting the people for
receiving the questionnaire. For example, as explained by Appellants, the
specific sections cited by the Examiner refer to asking questions of people to
complete their profile, not based on prior purchases. Accordingly, we agree
with Appellants that the Examiner’s finding that Smith teaches the disputed
limitation is in error because it is not supported by a preponderance of the
evidence. See In re Caveney, 761 F.2d 671, 674 (Fed. Cir. 1985)
(Examiner’s burden of proving non-patentability is by a preponderance of
the evidence); see also In re Warner, 379 F.2d 1011, 1017 (CCPA 1967)
(“The Patent Office has the initial duty of supplying the factual basis for its
rejection. It may not, because it may doubt that the invention is patentable,
17
Appeal 2016-006297
Application 13/087,053
resort to speculation, unfounded assumptions or hindsight reconstruction to
supply deficiencies in its factual basis.”).6
Accordingly, we are constrained on this record to reverse the
Examiner’s rejection of claim 1, along with the rejections of claim 10, which
recites limitations commensurate in scope to the disputed limitation
discussed above, and dependent claims 20, 21, 24, 25, and 28—31.
Moreover, because the Examiner has not shown that Boyd or the
Official Notice cures the foregoing deficiencies regarding the rejection of
the independent claims, we do not sustain the obviousness rejection of
dependent claims 22, 23, 26, and 27 (Final Act. 20—22) for similar reasons.
DECISION
For the above reasons, we affirm the Examiner’s decisions rejecting
claims 1,10, and 20-31 as unpatentable under sections 101 and 112, first
paragraph.
For the above reasons, we reverse the Examiner’s decisions rejecting
claims 1, 10, and 20-31 as unpatentable under section 103.
Because we affirm at least one ground of rejection with respect to
each claim on appeal, we affirm the Examiner’s decision to reject all of the
pending claims.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). See 37
C.F.R. §41.50(f).
6 Appellants raise additional issues in the Appeal Brief. Because we are
persuaded the Examiner erred with respect to this dispositive issue, we do
not reach the additional issues.
18
Appeal 2016-006297
Application 13/087,053
AFFIRMED
19