Ex Parte QuiggDownload PDFBoard of Patent Appeals and InterferencesNov 22, 201109849504 (B.P.A.I. Nov. 22, 2011) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte WILLIAM DONOVAN QUIGG ____________ Appeal 2010-005637 Application 09/849,504 Technology Center 3600 ____________ Before, ANTON W. FETTING, JOSEPH A. FISCHETTI and MICHAEL W. KIM, Administrative Patent Judges. FISCHETTI, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-005637 Application 09/849,504 2 STATEMENT OF THE CASE Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s final rejection of claims 1-47, 49-67. Claim 48 is cancelled. An oral hearing was held on July 14, 2011. We have jurisdiction under 35 U.S.C. § 6(b) (2002). SUMMARY OF DECISION We AFFIRM. THE INVENTION Appellant claims a system and method for coordinating production and distribution of paper products. (Specification 1: 6-7). Claim 1, reproduced below, is representative of the subject matter on appeal. 1. A computer system for processing a paper product, comprising: a processor and a memory including instructions together providing, a product order tracker configured to receive a paper product order from a paper purchaser to purchase a paper product that is produced by a paper manufacturer, the paper product including a roll of paper or a plurality of unbound, stacked paper sheets; a promotions order tracker configured to receive a promotional material order from a third-party advertiser to place promotional material on an enclosure for the paper product, wherein the promotional material is specifically targeted to a group of people associated with the paper purchaser, the group comprising those people likely to purchase the goods or services of the third-party advertiser, and wherein the group of people are likely to view the promotional material on the enclosure for an extended period of time; and a paper product tracker configured to provide instructions for creating the enclosure for the paper product, the enclosure Appeal 2010-005637 Application 09/849,504 3 having the promotional material of the received promotional material order, the paper product tracker further being configured to provide instructions to enclose the paper product of the received order with the created enclosure, wherein the paper manufacturer, the paper purchaser, and the third-party advertiser are different entities and the third-party advertiser pays to have the promotional material placed on the enclosure of the paper product. THE REJECTION The Examiner relies upon the following as evidence of unpatentability: Crossman US 5,035,515 Jul. 30, 1991 Itkonen US 5,473,863 Dec. 12, 1995 Ryan US 6,173,274 B1 Jan. 9, 2001 Loeb US 6,421,652 B2 Jul. 16, 2002 Giacomozzi WO 96/29263 Sep. 26, 1996 The following rejections are before us for review. The Examiner rejected claims 11, 34, and 49 under 35 U.S.C. § 101. The Examiner rejected claims 1-7, 9, 11, 14, 16, 18, 20-32, 34-40, 42, 44-47, 49- 54, 56, 61-63, and 65-67 under 35 U.S.C. § 103(a) over a Ryan in view of Giacomozzi. The Examiner rejected claims 8, 43, and 57-59 under 35 U.S.C. § 103(a) over Ryan, Giacomozzi, and Itkonen. The Examiner rejected claims 10, 33, 41, 55, and 64 under 35 U.S.C. § 103(a) over Ryan, Giacomozzi, and Crossman. Appeal 2010-005637 Application 09/849,504 4 The Examiner rejected claims 12-13, 15, 17, 19, and 50 under 35 U.S.C. § 103(a) over Ryan, Giacomozzi, and Loeb. The Examiner rejected claim 60 under 35 U.S.C. § 103(a) over a combination of Ryan, Giacomozzi, Itkonen, and Crossman. ISSUE Are claims 11, 34, and 49 patent eligible under 35 U.S.C. § 101? The issue of obviousness turns on whether Ryan discloses or makes obvious the claim requirement of wherein the promotional material is specifically targeted to a group of people associated with the paper purchaser, the group comprising those people likely to purchase the goods or services of the third-party advertiser. FINDINGS OF FACT We find the following facts by a preponderance of the evidence: 1. We adopt the Examiner’s findings as our own as set forth on pages 4-22; we make further findings as follows: 2. Ryan discloses that advertising space on an envelope may contain one or more messages from third party advertisers. (Col. 7, ll. 45-46). 3. Ryan discloses an address demographics database which in addition to destination grouping allows for: Generally, income, age and other demographic statistics (age, income, education level, marital status, home ownership status, dependent information, ethnicity, etc.) are available for different regions of the country and for certain designated geographic regions. Appeal 2010-005637 Application 09/849,504 5 (Col. 10, ll. 35-39). 4. Ryan further discloses that: [T]he delivery point zip code in the hygiened recipient address 50 may be cross referenced to the address demographics database 812 and the resulting other demographic statistics compared with the third party advertiser's requirements. For example, a luxury car manufacturer may only want its messages going to private residences from regions where the average income is above a predetermined threshold. (Col. 10, ll. 40-46). 5. The Examiner found that Loeb: [T]eaches that intermediary party (i.e. central controller) place advertisements from different advertisers on physical statements such as credit card statements or frequent flyer statements (see col 9, lines 15-25) where said intermediary receive remuneration from said advertisers (i.e. fee charged) for said placement (see col 3, line 35 - col 4, line10). (Answer 21-22). 6. Giacomozzi discloses that advertising space on a wrapper for paper products may contain one or more messages from third party advertisers. (Abstract). 7. Itkonen discloses a wrapper which envelopes a paper product. (Col. 3, ll. 41-46). ANALYSIS 35 U.S.C. § 101 Rejection We affirm the rejection of claims 11 and 34 under 35 U.S.C. § 35 U.S.C. § 101, and reverse the rejection of claim 49. Appeal 2010-005637 Application 09/849,504 6 The Examiner rejected claims 11, 34 and 49 under 35 U.S.C. § 101 because these claims fail to meet the machine or transformation test, (Answer 3), the so called Bilski test which determines whether a claimed process recites patentable subject matter under § 101 by testing whether the involved subject matter: (1) is tied to a particular machine or apparatus, or (2) transforms a particular article into a different state or thing. In re Bilski, 545 F.3d 943, 961-62 (Fed. Cir. 2008) (en banc). However, since the filing of the Appeal Brief, the Supreme Court has held that the “machine-or-transformation may well provide a sufficient basis for evaluating processes similar to those in the Industrial Age—for example, inventions grounded in a physical or other tangible form… [but] it may not make sense to require courts to confine themselves to asking the questions posed by the machine-or-transformation test”. Bilski v. Kappos, 130 S.Ct. 3218, 3227, 3231 (June 2010). Maintaining only that the test is an “important clue” or “an investigative tool”, the Court instead reasoned that claims that explained the basic concept of an activity (hedging) would allow the Appellant to pre-empt the use of this approach in all fields, and would effectively grant a monopoly over an abstract idea. Bilski v. Kappos, 130 S.Ct. 3218, 3231 (June 2010). Thus, abstract ideas are not patent eligible. Id. at 3225. We turn to the issue at hand with this understanding of the present status of the law before us today. Concerning independent claims 11 and 34, we find that these claims preempt abstract ideas and hence are patent ineligible. More specifically, we find that the claims’ recitation of the steps of receiving and providing are merely abstract ideas because each step is recited in the future tense of “to Appeal 2010-005637 Application 09/849,504 7 place”, “to create, “to deliver”, and hence is only contemplated, rather than executed. We also find that the step of having the third party pay to advertise is worded only as a contemplated act to be accomplished in the future. Likewise, the steps of claim 34 are recited in intended use format instructing, rather than requiring, acts presently executed. Each of independent claims 11 and 34 also recites: wherein computer- executable instructions implementing the method are stored in memory of the computer system for execution by a processor of the computer system. We do not find this recitation makes the claims patent eligible to the extent that computerization is required by the claim, because we find this step to be limited to insignificant extra solution activity not covered under 35 U.S.C. § 101. See, In re Schrader, 22 F. 3d 290, 294 (Fed. Cir. 1994) (recording step of the claimed process is incapable of imparting patent- eligibility under 35 U.S.C. § 101). However, independent claim 49 recites in pertinent part “manufacturing the ream of paper ….” We find that this step is recited as a direct action step and not an abstraction or an extra-solution item, because it goes to the core of the claimed manufacturing process. 35 U.S.C. § 103(a) rejection We affirm the rejection of claims made under 35 U.S.C. § 103(a). Appellant argues that in Ryan, “[t]he selection of a geographic area does not define a group, but merely acts as a filter to aid in individual targeting.” (Appeal Br. 21). Appeal 2010-005637 Application 09/849,504 8 We disagree with Appellant because we find that Ryan discloses an address demographic database 812 which groups information type by, e.g., age, income, education level, or home ownership, to name a few. (FF 3). The claims require promotional material be specifically targeted to a group of people associated with the purchaser, the group comprising those people likely to purchase the goods or services of the third-party advertiser. We find that Ryan explicitly discloses this requirement in his example of the third party advertiser who targets luxury cars to income levels of a predetermined threshold. (FF 4) Appellant next argues that “[t]here is nothing in the cited section of Ryan, or any other section, to suggest that a recipient of a mailpiece produced by Ryan's system is ‘likely to view the promotional material on the enclosure for an extended period of time’ as recited by claim 1.” (Appeal Br. 22). In light of the breadth of the claim, the Appellant’s argument is not persuasive as to error in the rejection, because it is almost impossible to objectively assure that Appellant’s paper cover will not be viewed any longer than the letter cover (envelope) of Ryan. Appellant next argues that “Ryan teaches away from placing promotional material on Giacomozzi's wrappers.” (Appeal Br. 22). We are not persuaded by this argument because both references concern advertising on a wrapper which medium is not owned by the advertising entity, i.e., third party. (FF 2, 6). Thus, neither reference actually teaches away from every aspect of all shopping cart models. See In re Gurley, 27 F.3d at 553. Thus, as long as the combination is not directed to Appeal 2010-005637 Application 09/849,504 9 the discouraged aspects of the particular advertising scheme, there is no teaching away. Appellant argues that “one skilled in the art would have no reasonable expectation of success combining Ryan and Giacomozzi because a technique for doing so would entail complexities that would require a detailed explanation for one of ordinary skill in the art to implement, which is not present in either Ryan or Giacomozzi.” (Appeal Br. 24). The Examiner however found that “… Giacomozzi teaches that it is old and well known in the promotion art to print promotional messages or advertisements on the enclosures or wrappers of manufacture products, such as paper handkerchiefs and where said messages or advertisements are not linked to the contained paper products in said wrappers (see figure 1; abstract).” (Answer 6). We find no error with the combination of Ryan and Giacomozzi as presented by the Examiner because each is tied to resolving a like problem, namely, disseminating messages or advertisements not linked to the contained products being wrapped or enveloped. (FF 2, 6). Appellant in turn argues that “[i]t is unclear, and neither Ryan nor Giacomozzi suggest, how one skilled in the art would combine Ryan's system with Giacomozzi to predict which user would purchase a particular handkerchief wrapper or to control how that user would publicly display the handkerchief wrapper.” (Appeal Br. 25) However, Appellant’s argument seeks an explanation of how each reference would be bodily incorporated into the other which is not the test for obviousness. See In re Keller, 642 F.2d 413, 425 (CCPA 1981). Appeal 2010-005637 Application 09/849,504 10 We therefore find that one skilled in the art would have had a reasonable expectation of success in combining the teaching of Giacomozzi of using manufacturer wrappers with the targeted group information of Ryan, because the geographic grouping of Ryan would be well suited to targeted marketing of the paper ware product in Giacomozzi where the paper ware could be most used, e.g., households with children. For obviousness under § 103, all that is required is a reasonable expectation of success. Wyers v. Master Lock Co., 616 F.3d 1231, 1242 (Fed. Cir. 2010). We are also un-persuaded by Appellant’s argument concerning claim 65 that “[n]owhere does Ryan disclose or suggest that the operator of its mail system instructs another entity to place an advertisement on an envelope.” (Appeal Br. 30). Claim 65 recites in pertinent part, “instructing another entity to dispose the promotional material on the enclosure.” The Examiner found that in Ryan, the third party advertiser may allow another third party advertiser to occupy the space. (Answer 10). Appellant’s arguments fail from the outset because they are not based on limitations appearing in claim 65, because claim 65 leaves open who it is that instructs the other entity. In re Self, 671 F.2d 1344, 1348 (CCPA 1982). We are not persuaded by Appellant’s argument that “Itkonen teaches away from Ryan” (Appeal Br. 33), because, both references concern using a wrapper which envelops a paper product contained within. (FF 2, 7). Thus, neither reference actually teaches away from every aspect of all wrapper systems. See In re Gurley, 27 F.3d at 553. Thus, as long as the combination is not directed to the discouraged aspects of wrapping a product, there is no teaching away. Appeal 2010-005637 Application 09/849,504 11 Appellant argues that “the Examiner has not identified a sufficient reason for combining Ryan, Giacomozzi, and Crossman.” (Appeal Br. 36). We disagree with Appellant because the Examiner found as a reason that “[i]t would have been obvious to... know that Ryan would include third party advertisers coupons into a package wrappers, as taught by Crossman in order to offset the cost of producing said products by billing advertisers for said including, as taught by Ryan.” (Answer 12). We find such a reason to be reasonable given that, even if Ryan does offset the cost of producing mailing by selling advertising space, this cost could be even more offset or even eliminated by a higher revenue generating item, such as by using coupons. Concerning Appellant’s arguments to claim 17, we find the following: Claim 17 recites in pertinent part “tracking receipt of remuneration from the paper purchaser to an intermediate party for the paper product.” Appellant argues that “…the Examiner's characterization of Loeb does not make reference to the language recited by claim 17, nor does it identify where Loeb discloses tracking receipt of remuneration.” (Appeal Br. 38) We disagree with Appellant. We find instead that the Examiner made additional findings (FF 5) in the Answer as to how Loeb meets the claim requirement. Appellant’s Reply Brief fails to rebut these finding. Therefore, we sustain the rejection of claim 17 based on the findings made by the Examiner in the Answer. Claim 19 recites in pertinent part wherein the advertisement order tracker is configured to instruct an intermediate party to place the advertisement on the wrapper. Appeal 2010-005637 Application 09/849,504 12 Appellant asserts “the Examiner did not indicate how this feature [of claim 19] is disclosed or suggested by the references, appellant submits that the Examiner has failed to establish a prima facie case of obviousness of claim 19.” (Appeal Br. 39). We again disagree with Appellant, and instead find that the Examiner did make out his prima case for claim 19 stating that the third party service providers of Loeb would also serve as intermediary between purchasers and advertisers motivated by the remuneration from the interaction. (Answer 12- 13). Arguments similar to those advanced for claim 19 are made for claim 50, which is similar to claim 19, and thus are not persuasive for the same reasons. Appellant next argues that “it is unclear how one of ordinary skill in the art would integrate Loeb's agents with Ryan's production mail system to produce the claimed invention.” (Appeal Br. 41). However, Appellant’s argument seeks an explanation of how each reference would be bodily incorporated into the other which is not the test for obviousness. See In re Keller, 642 F.2d 413, 425 (CCPA 1981). Declaration Evidence We recognize that evidence of secondary considerations, such as that presented by the Appellant, must be considered en route to a determination of obviousness/nonobviousness under 35 U.S.C. § 103. Accordingly, we consider anew the issue of obviousness under 35 U.S.C. § 103, carefully evaluating and weighing both the evidence relied upon by the Examiner and the objective evidence of nonobviousness provided by the Appellant. Appeal 2010-005637 Application 09/849,504 13 The Appellant presents evidence of commercial success through a Declaration executed on November 5, 2005. We examine whether the Appellant met his burden of establishing a nexus between the claimed invention and the evidence of secondary considerations. In re Huang, 100 F.3d 135, 139-40 (Fed. Cir. 1996). We do not find that Appellant met this burden. Initially we note that even assuming that the Appellant sufficiently demonstrates commercial success, that success is relevant in the obviousness context only if it is established that the sales were a direct result of the unique characteristics of the claimed invention, as opposed to other economic and commercial factors unrelated to the quality of the claimed subject matter. See Cable Elec. Products, Inc. v. Genmark, Inc., 770 F.2d 1015, 1027 (Fed. Cir. 1985). In other words, a nexus is required between the sales and the merits of the claimed invention. We fail to find such a nexus here. In ex parte proceedings before the Patent and Trademark Office, an applicant must show that the claimed features were responsible for the commercial success of an article if the evidence of nonobviousness is to be accorded substantial weight. Merely showing that there was commercial success of an article which embodied the invention is not sufficient. See Ex parte Remark, 15 USPQ2d 1498, 1502-03 (BPAI 1990). Appellant’s Declaration states that “The increased sales of cartons to Costco is a direct result of the invention.” (Declaration ¶5). We are not persuaded by this statement because an inventor’s opinion as to the purchaser’s reason for buying the product is insufficient to demonstrate a nexus between the sales and the claimed invention. In re Appeal 2010-005637 Application 09/849,504 14 Huang, 100 F.3d 135, 140 (Fed. Cir. 1996). Further, gross sales figures do not show commercial success absent evidence as to market share, Cable Electric Products, Inc. v. Genmark, Inc., 770 F.2d 1015 (Fed. Cir. 1985). Appellant further argues: Although the Declaration did not include information as to market share, the Declaration included (a) information as to the time period during which the product was sold (e.g., paragraph 4 states that the product was sold between July 17, 2005 and September 25, 2005), and (b) information as to what sales would normally be expected in the market (e.g., paragraph 4 states that before the claimed invention was sold, the average number of cartons shipped each week was 1,933). (Appeal Br. 42). We are not persuaded by this evidence because it fails to account for in any cogent manner (1) the nature and extent of advertising, (2) pricing (e.g., were cartons sold at a low price to gain a market share?) and/or recent changes in related technology or consumer demand which might have caused the change in the sales numbers during the reference periods. See Pentec, Inc. v. Graphic Controls Corp., 776 F.2d 309, 315 (Fed. Cir. 1985) (commercial success may have been attributable to extensive advertising and position as a market leader before the introduction of the patented product); In re Fielder, 471 F.2d 640, 646 (CCPA 1973) (success of invention could be due to recent changes in related technology or consumer demand; here success of claimed voting ballot could be due to the contemporary drive toward greater use of automated data processing techniques). We find that the Declaration fails to provide any credible nexus between the features of the claimed invention and the alleged commercial Appeal 2010-005637 Application 09/849,504 15 sales. In re Fielder, 471 F.2d 640, 642 (CCPA 1973). The alleged commercial success here fails to carry the day. CONCLUSIONS OF LAW We conclude the Examiner did not err in rejecting claims 1-47, 49-67 under 35 U.S.C. § 103(a). We conclude the Examiner did not err in rejecting claims 11 and 34 under 35 U.S.C. § 101 and did err in the rejection of claim 49 under 35 U.S.C. § 101. DECISION The decision of the Examiner to reject claims 1-47, 49-67 is AFIRMED. AFFIRMED MP Copy with citationCopy as parenthetical citation