Ex Parte Newman et al

Patent Trial and Appeal Board

Feb 21, 2017

13433764 (P.T.A.B. Feb. 21, 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.
13/433,764 03/29/2012 Jonathan Newman 82900702 3941
22879
HP Tnr
7590 02/23/2017 EXAMINER
3390 E. Harmony Road
Mail Stop 35
DAGNEW, SABA
FORT COLLINS, CO 80528-9544 ART UNIT PAPER NUMBER
3682
NOTIFICATION DATE DELIVERY MODE
02/23/2017 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):
ipa.mail@hp.com
barbl@hp.com
y vonne.bailey @ hp. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JONATHAN NEWMAN, ANDREW SINGER, JON K. LEWIS,
TERRY M. FRITZ, DAVID J. MILLER, and OPINDERJIT BHELLA
Appeal 2014-0081251
Application 13/433,7642
Technology Center 3600
Before NINA L. MEDLOCK, TARA L. HUTCHINGS, and
AMEE A. SHAH, Administrative Patent Judges.
SHAH, Administrative Patent Judge.
DECISION ON APPEAL
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
final decision rejecting claims 1—22. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM-IN-PART and ENTER a NEW GROUND OF
REJECTION pursuant to our authority under 37 C.F.R. § 41.50(b).
1 Throughout this opinion, we refer to the Appellants’ Appeal Brief
(“Appeal Br.,” filed Feb. 25, 2014), Reply Brief (“Reply Br.,” filed July 18,
2014), and Specification (“Spec.,” filed Mar. 29, 2012), and to the
Examiner’s Answer (“Ans.,” mailed May 22, 2014), and Final Office Action
(“Final Act.,” mailed Oct. 25, 2013).
2 According to the Appellants, the real party in interest is Hewlett-Packard
Development Company, LP. Appeal Br. 2.
Appeal 2014-008125
Application 13/433,764
STATEMENT OF THE CASE
The Appellants’ invention is directed generally to “[a] system that
could sift through a large collection of coupons, using customer specific
information and preferences, to find relevant coupons” and that would
“present[] coupons in a personally relevant and useful order.” Spec. ]Hf 9, 13.
Claims 1, 8, and 15 are the independent claims on appeal. Claim 15 is
illustrative of the subject matter on appeal and is reproduced below:
15. A method for presenting personalized coupon offers,
comprising:
aggregating coupons from different sources;
normalizing the coupons into a common coupon data
format;
storing the coupons in a database;
collecting information relating to a user;
analyzing the coupons in the database based in part on the
collected information relating to the user to create a set of
coupons for the user; and
presenting the set of coupons to the user based on the
analysis.
Appeal Br. 39 (Claims App.).
REJECTIONS
Claims 15—22 stand rejected under 35 U.S.C. § 101 as being directed
to non-statutory subject matter. Final Act. 3.
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Application 13/433,764
Claims 1—22 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Ozer (US 2005/0021403 Al, pub. Jan. 27, 2005). Id.
at 5.3
FINDINGS OF FACT
The findings of fact in the Analysis section below are supported at
least by a preponderance of the evidence.4
ANALYSIS
Non-Statutory Subject Matter - § 101
The Appellants argue claims 15—22 as a group with claim 15 as
representative. See Appeal Br. 15. We select claim 15 as representative of
the group of claims. Claims 16—22 stand or fall with claim 15. See
37C.F.R. §41.37(l)(c)(iv).
The Examiner finds that claim 15 is directed to non-statutory subject
matter because the claim does not satisfy the machine or transformation test
outlined in Bilski v. Kappos, 130 S. Ct. 3218 (2010), i.e., that the method is
neither “(1) [] tied to a particular machine or apparatus (machine
implemented); [n]or (2) particularly transform[s] a particular article to a
different state or thing.” Final Act. 3.
After the mailing of the Examiner’s Answer, the Supreme Court
clarified the law regarding patentable subject matter in Alice Corp. Pty. Ltd.
3 The rejection of claims 1—7 under 35 U.S.C. § 112 has been withdrawn.
Ans. 3.
4 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(explaining the general evidentiary standard for proceedings before the
Patent Office).
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Application 13/433,764
v. CLS Bank Inti, 134 S. Ct. 2347 (2014). In doing so, the Supreme Court
reiterated the two-step framework, previously set forth in Mayo
Collaborative Services v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1300
(2012), “for distinguishing patents that claim laws of nature, natural
phenomena, and abstract ideas from those that claim patent-eligible
applications of these concepts.” Alice Corp., 134 S. Ct. at 2355. The first
step in that analysis is to “determine whether the claims at issue are directed
to one of those patent-ineligible concepts,” id., e.g., to an abstract idea.
If so, the second step 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).
Applying the framework set forth in Alice, and as the first step of that
analysis, we find that the Specification describes the invention as “sift[ing]
through a large collection of coupons, using customer specific information
and preferences, to find relevant coupons” (Spec. 19) and “for presenting
coupons in a personally relevant and useful order which is directed at
achieving these objectives” {id. 113). Independent claim 15 is directed to a
method of presenting personalized coupon offers by aggregating
coupons/data, normalizing the coupons/data into a common format, storing
the coupons/data, collecting user information, analyzing the coupons/data to
create a set of coupons/data for the user, and presenting the set of
coupons/data to the user. See Appeal Br. 39. In that context, the invention
is directed to presenting personalized offers, a fundamental economic and
conventional business practice. Further, the steps recited in claim 15 involve
nothing more than collecting, normalizing, analyzing, and presenting data,
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Application 13/433,764
all steps that can be performed manually. In this regard, the claims are
similar to the claims that the Supreme Court determined were patent
ineligible in Parker v. Flook, 437 U.S. 584 (1978) (mathematical algorithm
used for adjusting an alarm limit) and, more recently, that the Federal Circuit
determined were patent ineligible in Elec. Power Grp. LLC v. Alstom,
830 F.3d 1350, 1353—54 (Fed. Cir. 2016) (collecting information and
“analyzing information by steps people go through in their minds, or by
mathematical algorithms, without more, [are] essentially mental processes
within the abstract-idea category.”), OIP Tech., Inc. v. Amazon.com, Inc.,
788 F.3d 1359, 1362—63 (Fed. Cir. 2015) (offer-based price optimization),
Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363,
1370 (Fed. Cir. 2015) (tailoring information presented to a user based on
particular information), and Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709,
714 (Fed. Cir. 2014) (using advertising as an exchange or currency). Here,
claim 15 involves nothing more than providing personalized offers by
obtaining and analyzing information, without any particular inventive
technology — an abstract idea. See Elec. Power Grp., 830 F.3d at 1354.
Having concluded that the claims are directed to an abstract idea, we
next consider whether there are additional elements recited in the claims that
transform the nature of the claim into a patent-eligible application of the
abstract idea, i.e., step 2. We conclude that there are not.
The elements added to the well-known practice of collecting and
analyzing information of (1) limiting the information collected to
information regarding coupons and users, (2) normalizing the data, and
(3) analyzing the information to create user-specific coupons/data do not
alter the nature of the abstract idea itself. We also note that the claim does
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Application 13/433,764
not recite a machine to impose a meaningful limit on the claim’s scope and
that the functions of the method can be performed manually, and thus also
do not alter the nature of the abstract idea. See Bilski, 561 U.S. at 610—12.
Nonetheless, any general purpose computer available at the time the
application was filed would have been able to perform these functions. The
Specification supports that view. See Spec. 11—17 (describing
conventional computer readable media and computer systems).
The dependent claims 16—22 add nothing significantly more to the
patent-ineligible concepts recited in independent claim 15. Instead, these
claims merely specify further details of the data obtained and stored and the
analysis.
In view of the foregoing, we sustain the Examiner’s rejection of
claims 15—22 under 35 U.S.C. § 101. Because our rationale differs from that
set forth by the Examiner, we denominate this a new ground of rejection.
We further ENTER a NEW GROUND OF REJECTION for claims
1—14. Independent apparatus claim 1 recites a system comprising a user
interface, a storage medium with databases, and engines, i.e., a general
computer, to perform a method similar to that of claim 15. Appeal Br. 35.
Similarly, independent apparatus claim 8 recites an apparatus comprising a
computer-readable medium with instructions to perform the method of
claim 15. Id. at 37. Both independent claims are thus also directed to the
abstract idea of presenting personalized coupon offers. The introduction of a
computer to implement an abstract idea is not a patentable application of the
abstract idea. Alice, 134 S. Ct. at 2357—58. The computer implementation
here is purely conventional and performs basic functions. See id.
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Application 13/433,764
at 2359-60. Taking the limitations of the claims alone and in combination,
the claims do not purport to improve the functioning of the computer itself,
nor do they effect an improvement in any other technology or technical field.
See id. at 2359.
Thus, independent claims 1 and 8 cover claimed subject matter that is
judicially-excepted from patent eligibility under § 101. The dependent
claims 2—6 and 9—14 add nothing significantly more to the patent-ineligible
concepts recited in independent claims 1 and 8. Instead, these claims merely
specify further details of how the data are obtained and stored and the
analysis.
Therefore, we enter a new ground of rejection of claims 1—14 under
35U.S.C. § 101.
Obviousness - § 103
Each of the independent claims 1,8, and 15 requires that the coupons
are normalized “into a common coupon data format.” Appeal Br. 35, 37, 39.
We agree with the Appellants that Ozer does not disclose or teach this
limitation. See Appeal Br. 25.
The Examiner finds that Ozer discloses this limitation at
paragraphs 123 and 179. The cited portions of Ozer disclose merging the
data of scheduled advertising inventory of advertising impressions with
historical advertising delivery data to estimate available inventory and
displaying percentages for committed advertisements that are normalized
values for each of the committed advertisements. Ozer || 123, 179. As the
Examiner finds, Ozer teaches “normalizing the value of each of the
committed advertisement[s].” Ans. 7. We agree with the Appellants that
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Application 13/433,764
“normalizing a value is not equivalent to normalizing coupons into a
common coupon data format.” Appeal Br. 25, Reply Br. 14 (emphases
omitted). Although the Examiner also finds that it would have been obvious
to “replace normalizing value[s] for each of the committed advertisements]
by normalizing a common coupon since the claimed element is simple
substitution of one known element for another producing a predictable result
renders the claim obvious” (Final Act. 22), the Examiner does not
adequately explain, and it is not clear to us, how one can substitute
normalizing values for coupons/data for normalizing the coupons/data into a
common data format.
Based on the foregoing, we are persuaded of error on the part of the
Examiner in the rejection of claims 1, 8, and 15 under 35 U.S.C. § 103(a),
and we do not sustain this rejection of independent claims 1,8, and 15, and
of dependent claims 2—7, 9-14, and 16—22.
DECISION
The Examiner’s rejection of claims 15—22 under 35 U.S.C. § 101 is
AFFIRMED. Insofar as our rationale differs from that set forth by the
Examiner, we denominate this a new ground of rejection.
The Examiner’s rejection of claims 1—22 under 35 U.S.C. § 103(a) is
REVERSED.
A NEW GROUND OF REJECTION has been entered for claims
1-14 under 35 U.S.C. § 101.
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). Section 41.50(b) provides that “[a] new ground of
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Application 13/433,764
rejection pursuant to this paragraph shall not be considered final for judicial
review.” Section 41.50(b) also provides
When the Board enters such a non-final decision, the appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
of rejection to avoid termination of the appeal as to the rejected
claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating to
the claims so rejected, or both, and have the matter reconsidered
by the examiner, in which event the proceeding will be remanded
to the Examiner. The new ground of rejection is binding upon
the examiner unless an amendment or new Evidence not
previously of Record is made which, in the opinion of the
examiner, overcomes the new ground of rejection designated in
the decision. Should the examiner reject the claims, appellant
may again appeal to the Board pursuant to this subpart.
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01.
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).
AFFIRMED-IN-PART; 37 C.F.R, $ 41.50(b)
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