Ex Parte Patterson

Patent Trial and Appeal Board

Feb 23, 2017

13356208 (P.T.A.B. Feb. 23, 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.
13/356,208 01/23/2012 Laura Patterson 1590-0001 5378
89320 7590 02/27/2017
Polansky & Associates, P.L.L.C.
12600 Hill Country Blvd
Suite R-275
Austin, TX 78738
EXAMINER
FIELDS, BENJAMIN S
ART UNIT PAPER NUMBER
3623
NOTIFICATION DATE DELIVERY MODE
02/27/2017 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):
ppolansky@patentwerks.net
admin @ patent werks. net
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LAURA PATTERSON
Appeal 2014-0081261
Application 13/356,2082
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 Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
final decision rejecting claims 1—20. We have jurisdiction under 35 U.S.C.
§ 6(b).
We REVERSE 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 Appellant’s Appeal Brief
(“Appeal Br.,” filed May 2, 2014), Reply Brief (“Reply Br.,” filed July 18,
2014), and Specification (“Spec.,” filed Jan. 23, 2012), and to the
Examiner’s Answer (“Ans.,” mailed May 21, 2014), and Final Office Action
(“Final Act.,” mailed Nov. 19, 2013).
2 According to the Appellant, the real party in interest is Vision Edge
Marketing, Inc. Appeal Br. 3.
Appeal 2014-008126
Application 13/356,208
STATEMENT OF THE CASE
The Appellant’s invention “is generally related to marketing
accountability, alignment and performance systems, and more particularly to
systems and methods of outcome-based mapping.” Spec. 12.
Claims 1, 9, and 14 are the independent claims on appeal. Claim 14 is
illustrative of the subject matter on appeal and is reproduced below
(bracketing added for reference):
14. A method comprising:
[(a)] generating a graphical user interface by a computing
system including user prompts, a plurality of user-selectable
options, and text input fields on a display;
[(b)] receiving user input from the computing system
defining a marketing plan starting from a quantifiable business
outcome and subsequently proceeding through a plurality of
stages of the marketing plan, each stage including at least one
element associated with the quantifiable business outcome and
with one or more elements of each previous stage of said
plurality of stages, at an input device of the computing system;
and
[(c)] mapping at least one element of each of the plurality
of stages to the quantifiable business outcomes through previous
elements by the computing system to produce a marketing
blueprint.
Appeal Br. 18—19 (Claims App.).
THE REJECTION
Claims 1—20 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Zyman (US 2003/0033192 Al, pub. Feb. 13, 2003).
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Application 13/356,208
FINDINGS OF FACT
The findings of fact in the Analysis section below are supported at
least by a preponderance of the evidence.3
ANALYSIS
Each of independent claims 1, 9, and 14 recites the limitation of
receiving user input defining a marketing plan “starting from a quantifiable
business outcome and subsequently proceeding through a plurality of stages
of the marketing plan.” We agree with the Appellant that Zyman does not
disclose this limitation. See Appeal Br. 7—13.
The Examiner cites to Zyman at Figures 1, 7, 10(A)—10(D), 18(C)—
18(E) and 26, and to paragraphs 7—9 and 80. Final Act. 4; Ans. 4—5. In
particular, the Examiner finds that Zyman’s “situation assessment” meets the
claimed “quantifiable business outcome (a goal or target)” in that it receives
from the customer “quantifiable measures which are customer centric,”
identifies growth opportunities, and develops growth strategies. Ans. 5.
We find persuasive the Appellant’s argument that Zyman’s situation
assessment does not meet the claimed quantifiable business outcome that is
used as the start of the plan and from which proceeds a plurality of stages.
See Appeal Br. 8—13. As the Appellant points out (id. at 7), the term
“quantifiable business outcome” is specifically disclosed in the Specification
as “a goal or target that is specific, quantifiable, and customer centric.”
Spec. 127. We agree with the Appellant that Zyman’s process of a situation
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).
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Application 13/356,208
assessment involves taking findings regarding the current situation, and not
regarding a goal or target, for drawing preliminary conclusions that are
looked at to draw final conclusions for business, category, brand, and
competitive assessments. See Appeal Br. 8—9; see also Zyman || 9, 81. We
also agree that Zyman does not disclose that a specific, quantifiable, and
customer centric goal or target is used as the start of the marketing plan, but
rather Zyman discloses that the output of the assessments and final
conclusions based on the current assessment form the input, i.e., start, for the
marketing plan involving identifying opportunities and growth strategies to
realize opportunities. See Appeal Br. 9-13; see also Zyman || 9, 81.
Based on the foregoing, we are persuaded of error on the part of the
Examiner in the rejection of claims 1, 9, and 14 under 35 U.S.C. § 102(b),
and we do not sustain this rejection of independent claims 1, 9, and 14, and
of dependent claims 2—8, 10-13, and 15—20.
NEW GROUND OF REJECTION
Pursuant to our authority under 37 C.F.R. § 41.50(b), we reject
claims 1—20 under 35 U.S.C. § 101 as being directed to non-statutory subject
matter. We find the claims are ineligible for patent protection because they
are directed to a non-statutory abstract idea.
The Supreme Court in Alice Corp. Pty. Ltd. v. CLS Bank Int’l,
134 S. Ct. 2347 (2014) identified a two-step framework for determining
whether claimed subject matter is judicially-excepted from patent eligibility
under § 101. We analyze the claims using the two-part analysis:
1) determine whether the claims are directed to an abstract idea; and 2) if an
abstract idea is present in the claims, determine whether any element, or
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Application 13/356,208
combination of elements, in the claims is sufficient to ensure the claims
amount to significantly more than the abstract idea itself to transform the
claims into a patent-eligible invention. See id. at 2355.
The claimed subject matter of independent claims 1, 9, and 14 is
directed to the concept of mapping user-input quantifiable business
outcomes to marketing stages to produce a marketing blueprint. See Appeal
Br. 18—19. Further, according to the Specification, the invention relates to
“mapping] the quantifiable business objectives to marketing milestones (i.e.
marketing objectives, strategies, program, tactics and activities) to produce
an outcome-based blueprint that aligns discrete marketing tasks to the
business objectives.” Spec. 117. In that context, the claims are directed to
gathering and mapping data to align the data of tasks and objectives, without
any inventive technology — an abstract idea. Our reviewing courts have
held certain fundamental economic and conventional business practices, like
collecting, analyzing, and presenting information, including when limited to
particular content, without more (see Electric Power Group, LLC v. Alstom
S.A., 830 F.3d 1350, 1353—54 (Fed. Cir. 2016)), and using organizational
and product group hierarchies to determine a price (Versata Dev. Grp., Inc.
v. SAP Am., Inc., 793 F.3d 1306, 1333 (Fed. Cir. 2015), cert, denied,
136 S. Ct. 2510, 195 L. Ed. 2d 841 (2016)), as being abstract ideas. The
gathering and mapping of data to use in aligning tasks and objectives of
claims 1, 9, and 14 is similar to these abstract ideas, and, thus, claims 1, 9,
and 14 are directed to an abstract idea.
Under the second step of the analysis, we find neither independent
claims 1, 9, and 14, nor dependent claims 2—8, 10-13, and 15—20 have any
additional elements, alone or in combination, that amount to significantly
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more to transform the abstract idea of gathering and mapping data to align
tasks and objectives into a patent-eligible invention. Independent claim 14
and dependent claims 15—20 recite a method of generating an interface
including prompts, options and text fields, receiving from the interface user
input data defining a marketing plan with the data of outcomes, proceeding
through stages of the plan, and mapping the data elements of the stages to
the data of outcomes. 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. Fig. 1, || 18—23 (providing
for a generic computer). See also Apple, Inc. v. Ameranth, Inc., 842 F.3d
1229, 1240-42 (Fed. Cir. 2016) (finding claims directed to generating menus
without particular programming ineligible under § 101). Independent
apparatus claim 1 and dependent claims 2—8 recite a medium causing a
generic processor to perform the method of claim 14. Appeal Br. 16.
Similarly, independent apparatus claim 9 and dependent claims 10—13 recite
a system comprising a processor, network interface, and memory, i.e., a
general computer, to perform the method of claim 14. 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. at 2359-
60. 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, under the two-part analysis, we find that claims 1, 9, and 14
cover claimed subject matter that is judicially-excepted from patent
eligibility under § 101. The dependent claims describe various versions of
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Application 13/356,208
obtaining and mapping the data and the stages of the plan that do little to
patentably transform the abstract idea.
Therefore, we enter a new ground of rejection of claims 1—20 under
35 U.S.C. § 101.
DECISION
The Examiner’s rejection under 35 U.S.C. § 102(b) of claims 1—20 is
REVERSED.
A NEW GROUND OF REJECTION under 35 U.S.C. § 101 has been
entered for claims 1—20.
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
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
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Application 13/356,208
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).
REVERSED; 37 C.F.R, $ 41.50(b)
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