Ex Parte Rama

Patent Trial and Appeal Board

Dec 15, 2017

13305147 (P.T.A.B. Dec. 15, 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.
13/305,147 11/28/2011 Kiran Rama DC-19342 2969
34456 7590 12/19/2017
LARSON NEWMAN, LLP
8200 N. MOPAC EXPY.
SUITE 280
AUSTIN, TX 78759
EXAMINER
UBALE, GAUTAM
ART UNIT PAPER NUMBER
3682
NOTIFICATION DATE DELIVERY MODE
12/19/2017 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):
docketing@larsonnewman.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KIRAN RAMA
Appeal 2016-002946
Application 13/305,147
Technology Center 3600
Before BIBHU R. MOHANTY, AMEE A. SHAH, and
ALYSSA A. FINAMORE, Administrative Patent Judges
SHAH, Administrative Patent Judge.
DECISION ON APPEAL1
The Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner’s
final decision rejecting claims 1, 3-11, 14-18, and 20, which are all of the
pending claims, under 35 U.S.C. § 101 as being directed to non-statutory
subject matter.3 We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Throughout this Opinion, we refer to the Appellant’s Appeal Brief
(“Appeal Br.,” filed Aug. 20, 2015), Reply Brief (“Reply Br.,” filed Jan. 20,
2016), and Specification (“Spec.,” filed Nov. 28, 2011), and to the
Examiner’s Answer (“Ans.,” mailed Nov. 20, 2015) and Final Office Action
(“Final Act.,” mailed Mar. 23, 2015).
2 According to the Appellant, the real party in interest is Dell Products, LP.
Appeal Br. 3.
3 The rejection of claim 14 under 35 U.S.C. § 112, second paragraph, has
been withdrawn. Ans. 5-6.
Appeal 2016-002946
Application 13/305,147
STATEMENT OF THE CASE
The Appellant’s invention “generally relates to information handling
systems, and more particularly relates to attributing sales to marketing
communications using an information handling system.” Spec. ^ 1.
Claims 1,11, and 18 are the independent claims on appeal. Claim 1
(Appeal Br. 8 (Claims App.)) is illustrative of the subject matter on appeal,
and is reproduced below:
1. A method comprising:
receiving, for each visit of a plurality of visits to a business
web site, an identity of a visitor of a plurality of visitors and an
identity of a corresponding marketing vehicle of a plurality of
marketing vehicles;
calculating, using a computer:
an individual probability that a first visit by a first
visitor is associated with a first marketing vehicle;
a joint probability that a second visit by the first
visitor is associated with a second marketing vehicle and
the first visit by the first visitor is associated with the first
marketing vehicle;
a first conditional probability that the first visitor
made a purchase during the second visit associated with
the second market vehicle given the first visit by the first
visitor is associated with the first marketing vehicle; and
a second conditional probability that the first visitor
made a purchase during the second visit associated with
the second market vehicle given the second visit by the
first visitor is associated with the second marketing
vehicle; and
attributing a respective portion of sales revenue to each
marketing vehicle by proportionally allocating revenue of the
purchase by the first visitor between the first market vehicle and
the second market vehicle based on the first conditional
probability and the second conditional probability.
2
Appeal 2016-002946
Application 13/305,147
ANALYSIS
The Supreme Court in Alice reiterated the two-step framework, set
forth previously in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66, 78-79 (2012), “for distinguishing patents
that claim laws of nature, natural phenomena, and abstract ideas from those
that claim patent-eligible applications of those concepts.” Alice Corp. Pty.
Ltd. v. CLS BankInt % 134 S. Ct. 2347, 2355 (2014). The first step in that
analysis is to “determine whether the claims at issue are directed to one of
those patent-ineligible concepts.” Id. (citing Mayo, 566 U.S. at 79)
(emphasis added). If so, the second step is to consider the elements of the
claims “individually and ‘as an ordered combination”’ to determine whether
the additional elements “‘transform the nature of the claim’ into a patent-
eligible application.” Id. (quoting Mayo, 566 U.S. at 78-79).
In other words, the second step is to “search for an ‘inventive
concept’—i.e., an element or combination of elements that is ‘sufficient to
ensure that the patent in practice amounts to significantly more than a patent
upon the [ineligible concept] itself.’” Id. (alteration in original) (quoting
Mayo, 566 U.S. at 72-73). The Court acknowledged in Mayo, that “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. We,
therefore, look to whether the claims focus on a specific means or method
that improves the relevant technology or are instead directed to a result or
effect that itself is the abstract idea, and merely invoke generic processes and
machinery. See Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1336
(Fed. Cir. 2016).
3
Appeal 2016-002946
Application 13/305,147
The Appellant does not provide any arguments against the rejection of
independent claims 1,11, and 18 under 35 U.S.C. § 101. See Appeal Br. 5.
The Appellant further does not contest the Examiner’s determination that,
under the first step of the Alice framework, the claims are directed to an
abstract idea. See id. Rather, the Appellant contends that, under the second
step of the Alice framework, “updating an emphasis of a marketing
campaign at a web site is significantly more than the alleged abstract idea,
because the recited analytics are further applied in a statutory process” and
represent “innovation and improvement in the field of marketing
technology.” Id. Specifically, the Appellant argues that the elements of the
dependent claims “are not well-understood, routine or conventional at least
because they have been found to be novel and non-obvious over the prior
art, and amount to significantly more than fundamental economic practice.”
Id.; see also id. at 7.
We do not agree. An abstract idea does not transform into an
inventive concept just because the prior art does not disclose or suggest it.
See Mayo, 566 U.S. at 91. “Groundbreaking, innovative, or even brilliant
discovery does not by itself satisfy the § 101 inquiry.” Association for
Molecular Pathology v. Myriad Genetics, Inc., 133 S. Ct. 2107, 2117
(Fed. Cir. 2013). Indeed, “[t]he ‘novelty’ of any element or steps in a
process, or even of the process itself, is of no relevance in determining
whether the subject matter of a claim falls within the § 101 categories of
possibly patentable subject matter.” Diamond v. Diehr, 450 U.S. 175, 188—
89 (1981); see also Mayo, 566 U.S. at 91 (rejecting “the Government’s
invitation to substitute §§ 102, 103, and 112 inquiries for the better
established inquiry under § 101”). In particular, “the novelty of the
4
Appeal 2016-002946
Application 13/305,147
mathematical algorithm is not a determining factor at all. Whether the
algorithm was in fact known or unknown at the time of the claimed
invention, as one of the ‘basic tools of scientific and technological
work’ ... it is treated as though it were a familiar part of the prior art.”
Parker v. Flook, 437 U.S. 584, 591-92 (1978) (quoting Gottschalkv.
Benson, 409 U.S. 63, 67 (1972)).
We also do not agree with the Appellant’s contention that the
Examiner’s rejection is in error because the Examiner rejected the claims
“based on ‘rationale similar to independent claims 1,11, and 18,’” and thus
did not provide a prima facie case. Appeal Br. 6 (quoting Final Act. 4-5);
see also id. at 7; Reply Br. 3-4. There is no indication that the Appellant
was not put on notice of the Examiner’s rejection or that the rejection
otherwise failed to satisfy the requirements of 35 U.S.C. § 132. We decline
to find error in the Examiner’s decision not to recite each dependent claim
limitation and address its patent-eligibility separately. The Examiner’s
discussion in the Final Office Action appears under the heading “Claims 1,
3-11, 14-18, and 20 are rejected under 35 U.S.C. [§] 101 because the
claimed invention is directed to a judicial exception (i.e. an abstract idea)
without significantly more.” Final Act. 3 (emphasis omitted). The
Examiner finds that the claimed subject matter, generally, is directed to the
abstract idea of receiving an identity of a plurality of visitors, calculating
probabilities, and attributing revenue, using generic computer technology in
a conventional manner. See Final Act. 3—4; see also Ans. 2-3. The
dependent claims elaborate on the abstract idea by further defining the
attributing step, the type of vehicle and the web site, and adding determining
steps and an updating step. See Appeal Br. 9-13 (Claims App.). We note
5
Appeal 2016-002946
Application 13/305,147
that there is no requirement that the features of the claims be “similar to
other concepts found to be abstract by the courts.” Id. at 7.4 See Alice,
134 S. Ct. at 2355-57. Nonetheless, the Examiner provides such analysis
(Ans. 3, 5), which the Appellant does not contest (see Reply Br. 2).
We also do not agree with the Appellant’s contention that the
Examiner’s rejection is in error because the “claims do not preempt the field
of data collection and analysis.” Appeal Br. 6; see also id. at 7; Reply
Br. 3—4. Although the Supreme Court has described “the concern that drives
this exclusionary principle [i.e., the exclusion of abstract ideas from patent
eligible subject matter] as one of pre-emption” {see Alice, 134 S. Ct.
at 2354), characterizing pre-emption as a driving concern for patent
eligibility is not the same as characterizing pre-emption as the sole test for
patent eligibility. “The Supreme Court has made clear that the principle of
preemption is the basis for the judicial exceptions to patentability” and “[f]or
this reason, questions on preemption are inherent in and resolved by the
§ 101 analysis.” Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371,
1379 (Fed. Cir. 2015) (citing Alice, 134 S. Ct. at 2354). Although
“preemption may signal patent ineligible subject matter, the absence of
complete preemption does not demonstrate patent eligibility.” Id. The
4 We note that the guidelines are not legal requirements, and regardless of
how closely the Examiner adheres to such guidelines (or not), we still must
heed the precedent set by our controlling courts. Intellectual Ventures ILLC
v. Erie Indem. Co., No. 2017-1147, 2017 WL 5041460, at *4 (Fed. Cir.
Nov. 3, 2017); In re Fisher, 421 F.3d 1365, 1372 (Fed. Cir. 2005) (“The
MPEP and Guidelines ‘are not binding on this court.’”); MPEP, Foreword
(“The Manual does not have the force of law or the force of the rules in Title
37 of the Code of Federal Regulations”).
6
Appeal 2016-002946
Application 13/305,147
aforementioned concept is not sufficiently limiting so as to fall clearly on the
side of patent-eligibility.
Finally, we do not agree with the Appellant’s contention that the
claims are not directed to an abstract idea because they “are necessarily
rooted in computer technology.” Reply Br. 2; see also id. at 4. We note that
the Specification provides that the invention is implemented on a generic
system comprising a generic processing units, memory, bus, display, and
input, i.e., a generic computer. Spec. 42, 44. There is no further
specification of particular technology for performing the steps. See Versata
Dev. Grp., Inc. v. SAP America, Inc., 793 F.3d 1306, 1334 (Fed. Cir. 2015);
see also Enflsh, 822 F.3d. at 1336 (focusing on whether the claim is “an
improvement to [the] computer functionality itself, not on economic or other
tasks for which a computer is used in its ordinary capacity”); DDR Holdings,
LLCv. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014). 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 Appellant does not provide evidence to the
contrary.
Thus, we are not persuaded of Examiner error in rejecting the claims
under 35 U.S.C. § 101, and we sustain the Examiner’s rejection.
7
Appeal 2016-002946
Application 13/305,147
DECISION
The Examiner’s rejection of claims 1, 3-11, 14-18, and 20 under
35 U.S.C. § 101 is AFFIRMED.
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
8