Ex Parte Phelan et al

Patent Trial and Appeal Board

Sep 13, 2018

13358440 (P.T.A.B. Sep. 13, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/358,440 01/25/2012
12324 7590 09/17/2018
Billion & Armitage - Digital River
7401 Metro Blvd.
Suite 425
Minneapolis, MN 55439
FIRST NAMED INVENTOR
Ryan Patrick Phelan
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
1177.175US1 3632
EXAMINER
KARMIS, ALISSA D
ART UNIT PAPER NUMBER
3683
NOTIFICATION DATE DELIVERY MODE
09/17/2018 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):
docketing@billionarmitage.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RYAN PATRICK PHELAN and
MANFRED TSEN-SHU JU
Appeal2017-007122
Application 13/358,440 1
Technology Center 3600
Before LARRY J. HUME, JENNIFER L. MCKEOWN, and
STEVEN M. AMUNDSON, Administrative Patent Judges.
HUME, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 1-9, which are all claims pending in the application. We
have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
1 According to Appellants, the real party in interest is BLUEHORNET
NETWORKS, Inc. App. Br. 3.
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STATEMENT OF THE CASE2
The Invention
Appellants' disclosed embodiments and claimed invention "relate[] to
electronic messaging systems for use on the internet. More particularly, the
present invention relates to a system and related tools for quickly creating
email marketing campaigns from predefined templates for particular types of
email marketing campaigns." Spec. ,r 2.
Exemplary Claim
Claim 1, reproduced below, is representative of the subject matter on
appeal (emphases added to contested prior-art limitations):
1. A computerized email message system with email
strategy template for use on a network including a server with a
processor and a memory, comprising:
a database stored in a non-transitory computer-readable
media within the server memory having subscriber profile data
where each subscriber record includes an email address, a
subscriber demographic, and status information for that
subscriber's subscriber email or internet behaviors, the database
comprises stored therein a plurality of email strategy templates
for an email marketing campaign, the plurality of email strategy
templates comprising:
a definition of a plurality of email strategies
and their different objectives, a depiction of the
customer persona that a particular strategy is
2 Our decision relies upon Appellants' Corrected Appeal Brief ("Br.," filed
Aug. 25, 2016); Examiner's Answer ("Ans.," mailed Dec. 30, 2016); Final
Office Action ("Final Act.," mailed July 10, 2015); and the original
Specification ("Spec.," filed Jan. 25, 2012). We note Appellants did not file
a Reply Brief in response to the factual findings and legal conclusions in the
Examiner's Answer.
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targeted towards and how it is applicable based on
a comparative measure of customer lifetime value
and relevancy of program, and a schematic
overview of the email strategies showing a pre-
defined sequence of email messages and exit paths
of the program;
a predefined segment of the subscriber
profile database that defines an initial audience for
at least one mail marketing campaign;
a first email template with a default title and
default content;
a second email template with a default title
and default content;
an email sending rule that sets a delay
between sending emails based on the first and the
second email templates;
a software module containing program code which when
executed by the processor in the server causes the server to
present a plurality of email strategies to solicit a response for
at least one of the email strategies, and receive an input to at
least one of the email strategies, and to perform operations of
utilizing marketer user input, the subscriber profile data in the
database, and at least one email strategy template to create a
rule for sending messages to selected subscribers with
particular status information for that subscriber's email or
internet behaviors within the subscriber profile data stored in
the database; and
an email campaign manager containing program code
which when executed by the processor in the server causes the
server to perform operations of sending a personalized message
to at least one selected subscriber over the network based on the
marketer user created rule whereby the selected subscriber
receives the sent personalized message as a result of having
particular status information for that subscriber's email or
internet behaviors.
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Prior Art
The Examiner relies upon the following prior art as evidence in
rejecting the claims on appeal:
Schadt et al. ("Schadt") US 2007 /0260523 Al Nov. 8, 2007
Rejections on Appea/3
RI. Claims 1-9 stand rejected under 35 U.S.C. § 101 as being
directed to patent-ineligible subject matter. Final Act. 9.
R2. Claims 1-9 stand rejected under 35 U.S.C. § I02(b) as being
anticipated by Schadt. Final Act. 14.
CLAIM GROUPING
Based on Appellants' arguments (Br. 11-18), we decide the appeal of
patent-ineligible subject matter Rejection RI of claims 1-9 on the basis of
representative claim 1; and we also decide the appeal of anticipation
Rejection R2 of claims 1-9 on the basis of representative claim 1. 4
3 We note the Examiner has withdrawn the rejection of claims 1-8 as being
indefinite under 35 U.S.C. § 112, second paragraph, and has also withdrawn
the objection to claim 1. Ans. 2.
4 "Notwithstanding any other provision of this paragraph, the failure of
appellant to separately argue claims which appellant has grouped together
shall constitute a waiver of any argument that the Board must consider the
patentability of any grouped claim separately." 37 C.F.R. § 4I.37(c)(l)(iv).
In addition, when Appellants do not separately argue the patentability of
dependent claims, the claims stand or fall with the claims from which they
depend. In re King, 801 F.2d 1324, 1325 (Fed. Cir. 1986).
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ISSUES AND ANALYSIS
In reaching this decision, we consider all evidence presented and all
arguments actually made by Appellants. To the extent Appellants have not
advanced separate, substantive arguments for particular claims, or other
issues, such arguments are waived. 37 C.F.R. § 4I.37(c)(l)(iv).
We disagree with Appellants' arguments with respect to claims 1-9
and, unless otherwise noted, we incorporate by reference herein and adopt as
our own: (1) the findings and reasons set forth by the Examiner in the action
from which this appeal is taken, and (2) the reasons and rebuttals set forth in
the Examiner's Answer in response to Appellants' arguments. We highlight
and address specific findings and arguments regarding claim 1 for emphasis
as follows.
1. § 101 Rejection RI of Claims 1-9
Issue 1
Appellants argue (Br. 11-14) the Examiner's rejection of claim 1
under 35 U.S.C. § 101 as being directed to patent-ineligible subject matter is
in error. These contentions present us with the following issue:
Under our governing case law concerning 35 U.S.C. § 101, did the
Examiner err in concluding claim 1 is directed to a judicial exception, i.e., an
abstract idea, without significantly more, and thus is patent-ineligible under
§ 101?
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Analysis
Alice Framework
Section 101 provides that anyone who "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. 35 U.S.C. § 101.
The Supreme Court has repeatedly emphasized that patent protection should
not extend to claims that monopolize "the basic tools of scientific and
technological work." Gottschalk v. Benson, 409 U.S. 63, 67 (1972); Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 71 (2012);
Alice Corp. Pty. Ltd. v. CLS Bankint'l, 134 S. Ct. 2347, 2354 (2014).
Accordingly, laws of nature, natural phenomena, and abstract ideas are not
patent-eligible subject matter. Id.
The Supreme Court's two-part Alice framework guides us in
distinguishing between patent claims that impermissibly claim the "building
blocks of human ingenuity" and those that "integrate the building blocks into
something more." Id. (internal quotation marks, citation, and bracketing
omitted). First, we "determine whether the claims at issue are directed to [a]
patent-ineligible concept[]." Id. at 2355. If so, we "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." Id. at
2357 (quoting Mayo, 566 U.S. at 72, 79). While the two steps of the Alice
framework are related, the "Supreme Court's formulation makes clear that
the first-stage filter is a meaningful one, sometimes ending the § 101
inquiry." Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed.
Cir. 2016). We note the Supreme Court "has not established a definitive rule
to determine what constitutes an 'abstract idea"' for the purposes of step one.
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Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1334 (Fed. Cir. 2016) (citing
Alice, 134 S. Ct at 2357).
However, our reviewing court has held claims ineligible as directed to
an abstract idea when they merely collect electronic information, display
information, or embody mental processes that could be performed by
humans. Elec. Power Grp., 830 F.3d at 1353-54 (collecting cases). At the
same time, "all inventions at some level embody, use, reflect, rest upon, or
apply laws of nature, natural phenomena, or abstract ideas." Mayo, 566 U.S.
at 71. Abstract ideas may include, but are not limited to, fundamental
economic practices, methods of organizing human activities, an idea of
itself, and mathematical formulas or relationships. Alice 134 S. Ct. at 2355-
57. Under this guidance, we must therefore ensure at step one that we
articulate what the claims are directed to with enough specificity to ensure
the step one inquiry is meaningful. Id. at 2354 ("[W]e tread carefully in
construing this exclusionary principle lest it swallow all of patent law.").
Under the "abstract idea" step we must evaluate "the 'focus of the
claimed advance over the prior art' to determine if the claim's 'character as a
whole' is directed to excluded subject matter." Affinity Labs of Texas, LLC
v. DIRECTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016) (internal citation
omitted). If the claims are not directed to a patent-ineligible concept, the
inquiry ends. See Visual Memory LLC v. NVIDIA Corp., 867 F.3d 1253,
1262 (Fed. Cir. 2017). If the claims are directed to a patent-ineligible
concept, we proceed to the "inventive concept" step. For that second step
we must "look with more specificity at what the claim elements add, in order
to determine 'whether they identify an "inventive concept" in the application
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of the ineligible subject matter' to which the claim is directed. 11 Affinity
Labs, 838 F.3d at 1258 (quoting Elec. Power Grp., 830 F.3d at 1353).
Alice Step I -Abstract Idea
The Examiner concludes:
[T]he claims are essentially directed to comparing new and
stored information and using rules to identify options
( comparing receiving marketer user input and input regarding
an email strategy (i.e., new information) and subscriber profile
data and email strategy template (i.e., stored information) and
use rules to send messages to selected subscribers (i.e., using
rules to identify options). This concept was found to be an
abstract idea by the Courts. [ citing SmartGene, Inc. v. Advanced
Biological Labs., SA, 555 F. App'x 950 (Fed. Cir. 2014)
(nonprecedential)]. Also, the concept of sending emails based
on using different email strategies, subscriber profile data, and
particular status information is similar to using categories to
organize, store and transmit information which was found to be
an abstract idea in the Cyberfone court decision.
Final Act. 11 ( citation omitted).
Appellants quote claim 1 and highlights several limitations in bold
font. See App. Br. 11-24. Appellants then contend, 11 [a]s pointed out below,
the Schadt et al. reference fails to teach many of the elements recited in
Claim 1 .... [ and] submits that all the elements that are not taught by the
Schadt et al. reference either individually considered or considered in
combination forms the additional element or elements that amount to
significantly more than the judicial exception. 11 App. Br. 12.
Appellants further argue:
Simply put, the elements not taught by the Schadt et al.
reference ( see argument D. below) does [sic] add specific
limitations other than what is well-understood, routine and
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convention in the field. Appellant has not been shown all the
elements by the Examiner. If they are so routine and
conventional, the Examiner should have produced art that
showed the eleemnts [sic] not taught by the Schadt et al.
reference. In the absence of such a showing, the Final Office
Action provides nothing more than conclusory statements that
the claims are directed to non-statutory subject matter because
they are considered by the Examiner to be directed toward an
abstract idea.
While the Final Office Action identifies a particular
abstract idea it has not demonstrated how this abstract idea is
embodied in the pending claims.
App. Br. 13.
Under the "abstract idea" step we must evaluate "the 'focus of the
claimed advance over the prior art' to determine if the claim's 'character as a
whole' is directed to excluded subject matter." Affinity Labs, 838 F.3d at
1257 ( citation omitted).
Turning to the claimed invention, claim 1 recites: " [a] computerized
email message system with email strategy template for use on a network
including a server with a processor and a memory." Claim 1 (preamble).
System claim 1 also requires:
(a) "a database" that stores, among other data, "subscriber
profile data" [and] "a plurality of email strategy templates for
an email marketing campaign";
(b) "a software module containing program code" that
carries out various functions; and
( c) "an email campaign manager containing program
code" that carries out additional functions.
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In the Answer, the Examiner concludes:
Appellants' concept of managing email strategy templates and
email messages using rules as part of an email campaign is
similar to the abstract ideas of filtering emails and receiving and
distributing email messages based on specified criteria (i.e.,
rules) in Intellectual Ventures I LLC., v. Symantec Corp.,
(_F.3d_, 120 U.S.P.Q.2d 1353 (Fed. Cir. 2016)). The abstract
idea of managing what emails to send using a template and
rules is not meaningfully different than filtering emails and
distributing emails based on rules. Therefore, Appellants'
claims are directed to an abstract idea identified by the courts.
Ans. 5.
Under step one, we agree with the Examiner that the inventions
claimed in each of independent claims 1 and 9 are directed to the abstract
ideas of "comparing new and stored information and using rules to identify
options ( comparing receiving marketer user input and input regarding an
email strategy (i.e., new information) and subscriber profile data and email
strategy template (i.e., stored information)" and using "rules to send
messages to selected subscribers (i.e., using rules to identify options)." Final
Act. 11.
As the Specification describes, "[t]he present invention relates to
electronic messaging systems for use on the internet. More particularly, the
present invention relates to a system and related tools for quickly creating
email marketing campaigns from predefined templates for particular types of
email marketing campaigns." Spec. ,r 2.
Further, the Abstract discloses:
A email message system with email strategy template for use
on a network is disclosed. The email message system includes a
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database having subscriber profile data. Each subscriber record
includes an email address, a subscriber demographic, and status
information for that subscriber's actions with prior emails or
other events. The database further has an email strategy
template for an email marketing campaign. The email strategy
template has several components such as a predefined segment
of the subscriber profile data that defines an initial audience for
the email marketing campaign. In addition, the email strategy
template includes a first and second email template with each
having a default title and default content. The email strategy
template also includes an email sending rule that sets a delay
between sending emails based on the first and the second email
templates. The email message system also is operatively
configured to utilize marketer user input, the subscriber profile
data in the database, and the email strategy template to create
a rule for sending messages to selected subscribers with
particular status information for that subscriber's actions with
prior emails within the subscriber profile data stored in the
database. The email message system further includes an email
campaign manager which sends a personalized message to at
least one selected subscriber over the network based on the
marketer user created rule. As a result, the selected subscriber
receives the sent personalized message as a result of having
particular status information for that subscriber's actions with
prior emails.
Abstract ( emphasis added).
We find this type of activity, i.e., comparing data, and using rules to
identify options, for example, includes longstanding conduct that existed
well before the advent of computers and the Internet and, notwithstanding
the implication of email, could be carried out by a human with pen and
paper. See CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366,
13 7 5 (Fed. Cir. 2011) ("That purely mental processes can be unpatentable,
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even when performed by a computer, was precisely the holding of the
Supreme Court in Gottschalk v. Benson."). 5
Our reviewing court has previously held other patent claims ineligible
for reciting similar abstract concepts. For example, while the Supreme
Court has enhanced the § 101 analysis since CyberSource in cases like Mayo
and Alice, the Federal Circuit continues to "treat[] analyzing information by
steps people go through in their minds, or by mathematical algorithms,
without more, as essentially mental processes within the abstract-idea
category." Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1146-
47 (Fed. Cir. 2016) (alteration in original) (quoting Elec. Power Grp., 830
F.3d at 1354).
In addition, our reviewing court has concluded that abstract ideas
include the concepts of collecting data, recognizing certain data within the
collected data set, and storing the data in memory. Content Extraction &
Transmission LLC v. Wells Fargo Bank, N.A., 776 F.3d 1343, 1347 (Fed.
Cir. 2014). Additionally, the collection of information and analysis of
information ( e.g., recognizing certain data within the dataset) are also
abstract ideas. Elec. Power Grp., 830 F.3d at 1353-54 (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"). Similarly, "collecting,
displaying, and manipulating data" is an abstract idea. Intellectual Ventures
I LLC v. Capital One Fin. Corp., 850 F.3d 1332, 1340 (Fed. Cir. 2017).
5 CyberSource further guides that "a method that can be performed by
human thought alone is merely an abstract idea and is not patent-eligible
under§ 101." CyberSource, 654 F.3d at 1373.
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Further, a process that employs mathematical algorithms to manipulate
existing information to generate additional information is abstract. Digitech
Image Techs., LLC v. Elecs.for Imaging, Inc., 758 F.3d 1344, 1351 (Fed.
Cir. 2014). Also, more recently, our reviewing court has also concluded that
acts of parsing, comparing, storing, and editing data are abstract ideas.
Berkheimer v. HP Inc., 881 F.3d 1360, 1367 (Fed. Cir. 2018).
Further, in Intellectual Ventures I, similar in key respects to the claims
before us on appeal, tailoring content based on information about the user
has also been determined as being directed to an abstract idea and, thus,
patent-ineligible.
At step one of the Alice framework, it is often useful to
determine the breadth of the claims in order to determine
whether the claims extend to cover a "fundamental ... practice
long prevalent in our system .... " Alice, 134 S. Ct. at 2356.
As noted, the claim relates to customizing information based on
(1) information known about the user and (2) navigation data
.... [T]ailoring is "a fundamental ... practice long prevalent
in our system .... " Id. There is no dispute that newspaper
inserts had often been tailored based on information known
about the customer-for example, a newspaper might advertise
based on the customer's location. Providing this minimal
tailoring----e.g., providing different newspaper inserts based
upon the location of the individual-is an abstract idea.
Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363,
1369 (Fed. Cir. 2015).
Therefore, in agreement with the Examiner, we conclude claim 1
involves nothing more than identifying, collecting, storing, comparing, and
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generating data, without any particular inventive technology- an abstract
idea. See Elec. Power Grp., 830 F.3d at 1354. 6
Accordingly, on this record, and under step one of Alice, we agree
with the Examiner's conclusion the claims are directed to an abstract idea.
Alice Step 2 -Inventive Concept
If the claims are directed to a patent-ineligible concept, as we
conclude above, we proceed to the "inventive concept" step. For that step
we must "look with more specificity at what the claim elements add, in order
to determine 'whether they identify an "inventive concept" in the application
of the ineligible subject matter' to which the claim is directed." Affinity
Labs, 838 F.3d at 1258 (quoting Elec. Power Grp., 830 F.3d at 1353).
In applying step two of the Alice analysis, our reviewing court guides
we must "determine whether the claims do significantly more than simply
describe [the] abstract method" and thus transform the abstract idea into
patent-eligible subject matter. Ultramercial, Inc. v. Hulu, LLC, 772 F.3d
709, 715 (Fed. Cir. 2014). We look to see whether there are any "additional
features" in the claims that constitute an "inventive concept," thereby
rendering the claims eligible for patenting even if they are directed to an
abstract idea. Alice, 134 S. Ct. at 2357. Those "additional features" must be
more than "well-understood, routine, conventional activity." Mayo, 566
U.S. at 79.
6 Merely automating previously manual processes by using computers does
not qualify as an eligibility-rejection-defeating improvement. Credit
Acceptance Corp. v. Westlake Servs., 859 F.3d 1044 (Fed. Cir. 2017).
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Evaluating representative claim 1 under step 2 of the Alice analysis,
we agree with the Examiner that it lacks an inventive concept that
transforms the abstract idea of comparing new and stored information, and
using rules to identify options, into a patent-eligible application of that
abstract idea. For example, the Examiner concludes:
The limitations describing what the plurality of email strategy
templates contain ... "a definition ... a schematic overview" as
well as "a predefined segment", "a first email template", "a
second email template" and "an email sending rule" are
associated with mere data gathering and not considered
significantly more. The limitation of using a rule to send a
message is addressed above. The additional elements or
combination of elements in the claims other than the abstract
idea per se amounts to no more than mere instructions to
implement the idea on a computer and recitation of generic
computer structure that serves to perform generic computer
functions that are well-understood, routine, and conventional
activities previously known to the pertinent industry. For
example, claims 1 and 9 recite a database containing templates,
a server to display data, receive input and send messages based
on received input. These are interpreted as recitation of generic
computer structure that serves to perform generic computer
functions that are well-understood, routine, and conventional
activities previously known in email software/applications.
Ans. 12 ( emphasis added).
We note the patent-eligibility inquiry may contain underlying issues
of fact. Mortg. Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314,
1325 (Fed. Cir. 2016). In particular, "[t]he question of whether a claim
element or combination of elements is well-understood, routine and
conventional to a skilled artisan in the relevant field is a question of fact."
Berkheimer, 881 F.3d at 1368.
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As evidence of the conventional nature of the claimed components
and processes, we note Appellants' Specification in paragraphs 36
through 40. For example:
[0036] Referring to FIGs 1 and 2, email strategy templates
108 are a component of an email marketing system 106. An
email marketing system is a specialized computing machine
operating on a network that allows users to create and send
email messages to subscribers. Because the email marketing
system provides services to others over a network, the
computing machine 106 is most likely to be a specially
programmed server, which allows multiple clients to access its
features and capabilities. The computing machine/server 106
typically includes a memory 202, read only memory 204, a
secondary storage device 206, a system BUS 207, a processor
208 ( central processing unit, or CPU), a communication
interface 209, an input device 210, a display device 212, and an
output device 214. The memory may include random access
memory (RAM) or similar types of memory.
[0037] Software applications, stored in the memory 202 or
secondary storage 206 for execution by a processor 208 are
operatively configured to perform the operations of the
exemplary system. The software applications may correspond
with a single module 216 or any number of modules. Modules
216 are program code or instructions for controlling a computer
processor to perform a particular method to implement the
features or operations of the system. The modules 216 may also
be implemented using program products or a combination of
software and specialized hardware components. In addition, the
modules 216 may be executed on multiple processors for
processing a large number of transactions, if necessary or
desired. Other data structures and tools may also be stored in
memory, such as a database 110 to store and organize
information, and a database management system 218 to modify,
extract and search for information within the database. The
program modules 216 may access the database via queries in
order to obtain operating information stored therein, such as the
variables stored or configured for running email strategy
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template programs 108 or for creating program reports for user
102 viewing.
[0038] The secondary storage device 206 may include a hard
disk drive, floppy disk drive, CD-ROM drive, DVD-ROM
drive, or other types of non-volatile data storage, and may
correspond with the various equipment and modules 216 shown
in the figures. The processor may execute the software
applications or programs either stored in memory 204 or
secondary storage 206 or received from the Internet 104 or
other network.
Spec. ,r,r 36-38.
We agree with the Examiner that the claim limitations may be broadly
but reasonably construed as reciting conventional computer components and
techniques, particularly in light of Appellants' Specification, as quoted
above. 7
With respect to the Step 2 analysis, we agree with the Examiner
because, as in Alice, the recitation of either a "computerized email message
system with email strategy template for use on a network including a server
with a processor and a memory" using a "database," a "software module,"
and an "email campaign manager containing program code" ( claim 1 ); or a
"method for managing email marketing messages for use on a network
7 During prosecution, claims must be given their broadest reasonable
interpretation when reading claim language in light of the specification as it
would be interpreted by one of ordinary skill in the art. In re Am. Acad. of
Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Under this standard,
we interpret claim terms using "the broadest reasonable meaning of the
words in their ordinary usage as they would be understood by one of
ordinary skill in the art, taking into account whatever enlightenment by way
of definitions or otherwise that may be afforded by the written description
contained in the applicant's specification." In re Morris, 127 F.3d 1048,
1054 (Fed. Cir. 1997).
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performed by a server having a processor and memory operating under the
control of program code within a software module" that includes steps of
"storing subscriber profile data," "storing a library of email strategy
templates in a database," "utilizing business user input," and "sending a
personalized message" ( claim 9) are simply not enough to transform the
patent-ineligible abstract idea here into a patent-eligible invention. See
Alice, 134 S. Ct. at 2357 ("[C]laims, which merely require generic computer
implementation, fail to transform [an] abstract idea into a patent-eligible
invention."). 8
Accordingly, based upon the findings above, on this record, we are
not persuaded of error in the Examiner's conclusion that the appealed claims
are directed to patent-ineligible subject matter. Therefore, we sustain the
Examiner's§ 101 rejection of independent claim 1, and grouped claims 2-9,
not argued separately, and which fall therewith. See Claim Grouping, supra.
2. § 102(b) Rejection R2 of Claims 1-9
Issue 2
Appellants argue (Br. 14--18) the Examiner's rejection of claim 1
under 35 U.S.C. § 102(b) as being anticipated by Schadt is in error. These
contentions present us with the following issue:
8 Appellants merely allege, without more, "Applicant submits that the
claims contain an inventive concept (i.e. step 2B of the test). In other words,
the pending claims include recitations that amount to significantly more than
the basic idea itself. The claims provide a specific, concrete and meaningful
application that represents an improvement in the field of email marketing."
App. Br.14. "[L]imiting an abstract idea to one field of use," however, does
not impart patent eligibility. See Bilski v. Kappas, 561 U.S. 593, 612 (2010);
see also Parker v. Flook, 437 U.S. 584, 589-90 (1978); Affinity Labs,
838 F.3d at 1259.
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Appeal2017-007122
Application 13/358,440
Did the Examiner err in finding the cited prior art discloses " [a]
computerized email message system with email strategy template for use on
a network including a server with a processor and a memory" that includes,
inter alia, storing data in a database, i.e., "a subscriber demographic,"
"a plurality of email strategy templates," and "a depiction of the customer
persona," and which carries out "a comparative measure of customer lifetime
value and relevancy of program," and which shows "a pre-defined sequence
of email messages and exit paths of the program," while presenting "a
plurality of email strategies to solicit a response for at least one of the email
strategies, and receive an input to at least one of the email strategies," as
recited in claim 1?
Analysis
Appellants contend:
Simply put, the Schadt et al. reference fails to teach many of the
above elements that are recited in claim 1. For example, there is
no teaching of a subscriber demographic in the Schadt et al.
reference. The word "demographic" does not appear, based on a
search of the Schadt et al. reference at the USPTO website. In
addition, there is no teaching of any "exit path" much less " ...
a pre-defined sequence of email messages and exit paths of the
program ... "Again, the word "exit" does not seem to appear
in the Schadt et al. reference.
Furthermore, there is no teaching of causing " ... the
server to present a plurality of email strategies to solicit a
response for at least one of the email strategies, and receive an
input to at least one of the email strategies ... "
App. Br. 15.
The Examiner makes various findings of fact in the Answer, and
responds to each of Appellants' arguments while referencing previously-
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Appeal2017-007122
Application 13/358,440
provided mappings of the claim limitations to the Schadt reference.
Ans. 5-13. We incorporate the Examiner's findings herein by reference and
adopt them as our own. Appellants do not file a Reply Brief to rebut the
Examiner's findings in the Answer.
Therefore, based upon the findings above, on this record, we are not
persuaded of error in the Examiner's reliance on the cited prior art to
disclose the disputed limitations of claim 1, nor do we find error in the
Examiner's resulting finding of anticipation. Therefore, we sustain the
Examiner's anticipation rejection of independent claim 1, and grouped
claims 2-9 which fall therewith. See Claim Grouping, supra.
CONCLUSIONS
(1) The Examiner did not err with respect to patent-ineligible
subject matter Rejection RI of claims 1-9 under 35 U.S.C. § 101, and we
sustain the rejection.
(2) The Examiner did not err with respect to anticipation Rejection
R2 of claims 1-9 under 35 U.S.C. § I02(b) over the cited prior art of record,
and we sustain the rejection.
DECISION
We affirm the Examiner's decision rejecting claims 1-9.
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. § 4I.50(f).
AFFIRMED
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