Ex Parte Obrea et al

Patent Trial and Appeal Board

Oct 28, 2014

11844020 (P.T.A.B. Oct. 28, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD

____________

Ex parte ANDREI OBREA, THERESA BIASI,
BRADLEY R. HAMMELL, and CHRISTIAN CREWS
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Appeal 2012-003248
Application 11/844,020
Technology Center 3600
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Before MURRIEL E. CRAWFORD, ANTON W. FETTING, and
NINA L. MEDLOCK, Administrative Patent Judges.

CRAWFORD, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s
final decision rejecting claims 1–23. We have jurisdiction over the appeal
under 35 U.S.C. § 6(b).
We AFFIRM.
BACKGROUND
Appellants’ invention is directed to systems and methods that provide
an interactive offer (Spec. 1).
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Claim 1 is illustrative:
1. A computer implemented method using a computer comprising:
establishing a relationship between a marketer and a trusted
third party using the computer;
establishing a relationship between a customer and the trusted
third party using the computer;
receiving, by the trusted third party from the customer via an
electronic communication at the computer, an indication of an
expressed interest in a particular offer that has been previously
received by the customer, the expressed interest being an action other
than a purchase associated with the offer; and
outputting using the computer, by the trusted third party,
information associated with the indication of the expressed interest in
the offer to the marketer.

The Examiner relies on the following prior art reference as evidence
of unpatentability:
Goldhaber US 5,794,210 Aug. 11, 1998
Paltenghe US 2001/0011250 A1 Aug. 2, 2001

Appellants appeal the following rejections:
Claims 1-13 under 35 U.S.C. § 101 as directed to non-statutory subject
matter.
Claims 1-11, 14-20, and 23 under 35 U.S.C. § 102(b) as anticipated by
Paltenghe (US2001/0011250 A1, pub. Aug. 2, 2001).
Claims 12 and 21 under 35 U.S.C. § 103(a) as unpatentable over Paltenghe.
Claims 13 and 22 under 35 U.S.C. § 103(a) as unpatentable over Paltenghe
in view of Goldhaber (US 5,794,210, iss. Aug. 11, 1998).

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ISSUE
Did the Examiner err in rejecting claims 1–13 and 23 as being
directed to non-statutory subject matter because claims 1–13 are tied to a
particular machine and because claim 23 is directed to a physical medium?
Did the Examiner err in rejecting claim 1 because Paltenghe does not
disclose receiving an indication of an expressed interest in a particular offer,
the expressed interest being an action other than a purchase associated with
the offer?
Did the Examiner err in rejecting claims 3 and 15 because Paltenghe
does not describe activation of an existing offer?
Did the Examiner err in rejecting claims 12 and 21 because the cited
references expressly teach away from the combination and because the
Examiner improperly relied on inherency?
Did the Examiner err in rejecting claims 13 and 22 because Goldhaber
does not disclose initiating an auction regarding a plurality of offers on
behalf of the customer by the third party, wherein the auction is initiated
based on the relationship between the trusted third party and the marketer?

FACTUAL FINDINGS
We adopt the Examiner’s findings as our own. Ans. 9–14. Additional
findings of fact may appear in the Analysis that follows.

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ANALYSIS
Non-statutory subject matter

We are not persuaded of error on the part of the Examiner by
Appellants’ argument that claims 1–13 are tied to a particular machine.
Under § 101, there are four categories of subject matter that are
eligible for patent protection: (1) processes; (2) machines; (3) manufactures;
and (4) compositions of matter. 35 U.S.C. § 101. Claims that fall within
one of these four subject matter categories may nevertheless be ineligible for
patent protection if they encompass laws of nature, physical phenomena, or
abstract ideas. See Diamond v. Chakrabarty, 447 U.S. 303, 309 (1980). The
“abstract ideas” category reflects “the longstanding rule that ‘[a]n idea of
itself is not patentable.”’ Gottschalk v. Benson, 409 U.S. 63, 67 (1972)
(quoting Rubber-Tip Pencil Co. v. Howard, 87 U.S. (20 Wall.) 498, 507
(1874)).
Subsequent to the filing of briefs in this appeal, the Supreme Court
decided Alice Corp. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014). Alice applies
a two-part framework, earlier set out in Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 132 S. Ct. 1289 (2012), “for distinguishing patents
that claim laws of nature, natural phenomena, and abstract ideas from those
the claim patent-eligible applications of those concepts.” Alice, 134 S. Ct. at
2355.
Under the two-part framework, it must first be determined if “the
claims at issue are directed to a patent-ineligible concept.” (Id.)
Appellants’ specification states that prior art methods using
conventional offers such as coupons, mailers and other print media provide
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an indication of when a customer uses a coupon but do not provide an
indication of the interest a customer has in an offer other than with the
purchase associated with an offer (Spec. 1). Without such an indication of
an interest in an offer, the marketer has no way of refining an offer to better
appeal to a potential customer. Therefore, the invention is directed to a way
to determine what interest, other than a purchase, an offer generates from a
customer (Spec. 1).
Claim 1 recites a series of steps involving (1) establishing
relationships between a marketer and a third party and between a customer
and the third party; (2) receiving by the third party communication from the
customer which expresses an interest in an offer that has been received by
the customer in which the interest is something other than a purchase of the
offer; and (3) communicating by the third party to the marketer information
associated with the interest expressed. Like the abstract idea in the patent in
Bilski that “simply involved a ‘series of steps instructing how to hedge
risk,”’ Alice, 134 S. Ct. at 2356, or the abstract idea in the patent in Alice
that involved a series of steps describing intermediated risk, id., claim 1
involves a series of steps for communicating an interest of a customer in an
offer, without a purchase by the customer, to a marketer through a trusted
third party. We are not persuaded that the Examiner erred in concluding that
claim 1 is directed to an abstract idea.
Because we agree that claim 1 is directed to an abstract idea, we turn
to the second part of the two-part framework. We must now determine if
“the elements of the claim . . . contain[] an ‘inventive concept’ sufficient to
‘transform' the claimed abstract idea into a patent-eligible application.”
Alice, 134 S. Ct. at 2357 (citing Mayo, 132 S. Ct. at 1294, 1298).
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Claim 1 recites the steps of: (1) establishing a relationship between a
marketer and a trusted third party . . . using a computer; (2) establishing a
relationship between a customer and the trusted third party . . . using a
computer; (3) receiving by the trusted third party from the customer via an
electronic communication at the computer an indication of an expressed
interest and (4) outputting using the computer by the trusted third party
information associated with the indication of the expressed interest in the
offer.
Claim 1 “amount[s] to ‘nothing significantly more’ than an instruction
to apply the abstract idea of communicating an interest of a customer in an
offer, without a purchase by the customer, to a marketer through a trusted
third party using some unspecified, generic computer.” See Alice, 134 S. Ct.
at 2360. Under Alice, that is not sufficient “to transform an abstract idea
into a patent-eligible invention.” Id.
In view of the foregoing, we will sustain the Examiner’s rejection of
claim 1 under 35 U.S.C. § 101. We will also sustain this rejection as it is
directed to claims 2–13 because the Appellants have not argued the separate
patentability of these claims.
We are also not persuaded of error on the part of the Examiner by
Appellants’ argument that claim 23 is directed to a physical medium. We
agree generally with, and adopt as our own the Examiner’s rejection and
response to this argument found on pages 7 and 22 of the Answer. In this
regard, we agree with the Examiner that the common and ordinary meaning
of a computer readable medium includes transitory or propagating signals
and waves.
As such, we will sustain this rejection as it is directed to claim 23.
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Anticipation
We are not persuaded of error on the part of the Examiner in rejecting
claim 1 by Appellants’ argument that Paltenghe does not disclose receiving
an indication of an expressed interest in a particular offer, the expressed
interest being an action other than a purchase associated with the offer. We
agree with the Examiner that the disclosure in Paltenghe in paragraph 61 that
a customer can request more information about an offer is a disclosure of an
expressed interest in an offer other than a purchase. In addition, as the
request for more information about an offer occurs after the customer
receives the offer, Paltenghe discloses that the expressed interest is related to
a previously received offer.
In view of the foregoing, we will sustain the Examiner’s rejection of
claim 1. We will also sustain the Examiner’s rejection of claims 2, 5 to 8,
11, 14, 17 to 19 and 23 because the Appellants have not argued the separate
patentability of these claims.
We are not persuaded of error on the part of the Examiner in rejecting
claims 3 and 15 by Appellants’ argument that Paltenghe does not describe
activation of an existing offer. We agree with the Examiner that the coupons
disclosed in Paltenghe in paragraph 66 are an offer as broadly claimed and
the redemption of the coupons is activation of the offer. In response to the
Appellants’ argument that some states don’t require activation, we note that
the activation by redemption would occur regardless of whether the
activation takes place in a state that requires activation or in a state that does
not require activation. It is the redemption of the coupon that is an
activation as broadly claimed.
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In view of the foregoing, we will sustain the Examiner’s rejection of
claims 3 and 15.
We are not persuaded of error on the part of the Examiner in rejecting
claims 12 and 21 by Appellants’ argument that the cited references expressly
teach away from the combination and because the Examiner improperly
relied on inherency.
The Appellants do not explain how the references expressly teach
away from the combination and, thus, this argument is not persuasive. In
any case, we note that a reference will teach away if it suggests that the line
of development flowing from the reference’s disclosure is unlikely to be
productive of the result sought by the applicants. See United States v.
Adams, 383 U.S. 39, 52 (1966) (“known disadvantages in old devices which
would naturally discourage the search for new inventions may be taken into
account in determining obviousness”); W.L. Gore & Assoc., Inc. v. Garlock,
Inc., 721 F.2d 1540, 1550–51 (Fed.Cir.1983) (the totality of a reference’s
teachings must be considered); In re Sponnoble, 405 F.2d 578, 587 (CCPA
1969) (references taken in combination teach away since they would
produce a “seemingly inoperative device”); In re Caldwell, 319 F.2d 254,
256 (CCPA1963) (reference teaches away if it leaves the impression that the
product would not have the property sought by the applicant).
Appellants have not established that the line of development flowing
from the disclosure of any of the cited references is unlikely to be productive
of the result sought by the applicants or that the combination would produce
a seemingly inoperative device.
Appellants’ argument regarding inherency also fails. Appellants
argue that the Examiner has relied on inherency in finding that the system in
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Paltenghe must be notified by the merchant or customer. However, a careful
reading of the rejection advanced by the Examiner reveals that rather than
relying on inherency, the Examiner relies on the teachings in Paltennghe. In
this regard, the Examiner reasons that if a fee paid to the third party is
changed based on a purchase, as is taught by paragraph 63 of Paltenghe, the
third party must be informed that a purchase has been made. Appellants
argue, with reference to Figure 8, that the system of Paltenghe would have
no reason for the marketer to notify the trusted third party of a purchase
because the trusted third party already knows this information. We agree
with the Examiner that the disclosure in Paltenghe related to Figure 8
describes notification in regard to a customer’s interest not in regard to a
completed sale.
As such we will also sustain the Examiner’s rejection of claims 12
and 21.
We are not persuaded of error on the part of the Examiner in rejecting
claims 13 and 22 by Appellants’ argument that Goldhaber does not disclose
initiating an auction regarding a plurality of offers on behalf of the customer
by the third party, wherein the auction is initiated based on the relationship
between the trusted third party and the marketer. We agree with the
Examiner’s response to this argument found on page 31 of the Answer. In
this regard we find that Paltenghe discloses fees for services and also
discloses sharing fees with customers and Goldhaber discloses auctions as
an option for pricing or fee structures. It would have been obvious to use
either a fee structure as taught by Paltenghe or an auction as taught by
Goldhaber. We also agree with the Examiner that the initiation of the
auction can be based on the relationship with the customer or the
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relationship with the marketer and to choose one over the other would have
yielded no more than predictable results. In view of the foregoing, we will
sustain the Examiner’s rejection of claims 13 and 22.

DECISION
The decision of the Examiner is AFFIRMED.

TIME PERIOD
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) (2009).

ORDER
AFFIRMED

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