Ex Parte RAMACHANDRAN et al

Patent Trial and Appeal Board

Aug 22, 2018

13364423 (P.T.A.B. Aug. 22, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/364,423 02/02/2012
25537 7590 09/13/2018
VERIZON
PA TENT MANAGEMENT GROUP
1320 North Court House Road
9th Floor
ARLINGTON, VA 22201-2909
UNITED ST A TES OF AMERICA
FIRST NAMED INVENTOR
Vidhyaprakash RAMACHANDRAN
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.
20110309 9192
EXAMINER
HATCHER, DEIRDRE D
ART UNIT PAPER NUMBER
3683
NOTIFICATION DATE DELIVERY MODE
09/13/2018 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):
patents@verizon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte VIDHY APRAKASH RAMACHANDRAN,
ASHLEY EV ANS, PAUL A. DONFRIED, and
MICHAEL POLOSKY
Appeal2016-006336
Application 13/364,423 1
Technology Center 3600
Before HUBERT C. LORIN, BIBHU A. MOHANTY and
NINA L. MEDLOCK, Administrative Patent Judges.
LORIN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Vidhyaprakash Ramachandran et al. (Appellants) seek our review
under 35 U.S.C. § 134(a) of the Final Rejection of claims 1-3, 5-15, and
17-20. We have jurisdiction under 35 U.S.C. § 6(b).
SUMMARY OF DECISION
We AFFIRM.
1 The Appellants identify Verizon Communications Inc. as the real party in
interest. App. Br. 3.
Appeal 2016-006336
Application 13/364,423
THE INVENTION
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A method comprising:
receiving, by a server device, authorization to collect
information about a behavior of a user from a data source;
collecting, by the server device, the information from the
data source, wherein the collected information comprises at
least one of retail, travel or service information, and
wherein the collected information associates the behavior
of the user with different types of third parties;
receiving, by the server device and from a third party
device, questions about the behavior of the user,
wherein receiving the questions comprises:
receiving, one or more selected questions from one
or more predefined questions, or
receiving one or more questions entered via a text
box by a third party;
determining, by the server device, whether the third party
associated with the third party device is authorized to receive
answers, to the questions, based on the collected information;
wherein receiving the authorization to collect the
information about the behavior comprises:
receiving an authorization to provide answers,
based on the information, to a particular type of
third party and
wherein determining whether the third party is
authorized to receive the answers is based on
determining a type of the third party, and
determining that the third party is authorized to
receive the answers when the type matches the
particular type; and
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determining, by the server device, the answers based on
the information when the third party is authorized to receive the
answers,
wherein the answers do not include any data that
identifies the user; and
transmitting, by the server device, the answers to the
third party device.
THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Carpenter
Landis
US 2008/0238009 Al
US 2011/0106610 Al
The following rejection is before us for review:
Oct. 2, 2008
May 5, 2011
1. Claims 1-3, 5-15, and 17-20 are rejected under 35 U.S.C. § 101 as
being directed to judicially-excepted subject matter.
2. Claims 1-3, 5, 6, 8-15, 17, and 18 are rejected under 35 U.S.C.
§§I02(a) and (e) as being anticipated by Landis.
3. Claims 7, 19, and 20 are rejected under 35 U.S.C. § I03(a) as being
unpatentable over Landis and Carpenter.
ISSUE
Did the Examiner err in rejecting claims 1-3, 5-15, and 17-20under
35 U.S.C. §101 as being directed to judicially-excepted subject matter?
Did the Examiner err in rejecting claims 1-3, 5, 6, 8-15, 17, and 18
under 35 U.S.C. §§I02(a) and (e) as being anticipated by Landis?
Did the Examiner err in rejecting claims 7, 19, and 20 under 35 U.S.C.
§ I03(a) as being unpatentable over Landis and Carpenter?
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ANALYSIS
The rejection of claims 1-3, 5-15, and 17-20 under 35 USC§ 101 as
being directed to judicially-excepted subject matter.
The Appellants argue these claims as a group. See Br. 3-7. We select
claim 1 as the representative claim for this group, and the remaining
claims 2, 3, 5-15, and 17-20 stand or fall with claim 1. 3 7 C.F .R.
§ 4I.37(c)(l)(iv).
Alice Corp. Proprietary Ltd. v. CLS Bank International, 134 S. Ct.
2347 (2014), identifies a two-step framework for determining whether
claimed subject matter is judicially excepted from patent eligibility under
35 U.S.C. § 101.
According to Alice step one, "[ w ]e must first determine whether the
claims at issue are directed to a patent-ineligible concept," such as an
abstract idea. Alice, 134 S. Ct. at 2355.
In that regard, the Examiner determined that "Claim 1 is directed
toward a process for collecting information about the behavior of a user."
Final Rej. 3. The Examiner determined that said "collecting information
about a user" is an "abstract idea." Final Rejection 3. Accordingly, the
Examiner determined that claim 1 is directed to an abstract idea.
The Brief begins by stating, inter alia, that "the Final Office Action
states that the claims 1-3, 5-15, and 17-20 merely encompass the abstract
ideas of collecting consumer behavior information." App. Br. 9. That is not
an accurate statement of what the Examiner determined. See the preceding
paragraph.
The Brief then states that Office guidance requires the Examiner
provide a reasoned explanation. That is true but the Appellants do not
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explain, nor do we see, in what way the Examiner's explanation is
unreasoned. There is certainly an explanation. See Final Rej. 2-5. And it
appears to be well-reasoned.
Next, the Brief states that the "Final Action states that the abstract
idea is directed to collecting consumer behavior information .... "App.Br. 9
( emphasis added). That is not accurate. The Examiner determined that
claim 1 is directed to a process for collecting information about the behavior
of a user and that such a process is an abstract idea. It follows that the
Examiner determined that claim 1 is directed to an abstract idea.
The Brief then states that "[ t ]he opinion regarding the claims stated in
the Final Office Action is clearly not based on evidence, and instead merely
expresses an opinion that claim 1 amounts to an abstract idea." App. Br. 9.
The Appellants are apparently of the belief that, absent evidence, a
determination under step 1 may not be made. We know of no decision that
stands for that proposition. In "fact, "[ w ]hether an invention recites patent-
eligible subject matter under section 101 is a pure question of law .... " In re
Wang, -No. 2017-1827, 2018 WL 3045563, at *2 (Fed. Cir. June 20, 2018)
(citing Genetic Techs. Ltd. v. Merial LLC., 818 F.3d 1369, 1373 (Fed. Cir.
2016)).
Moreover, the Appellants do not explain, nor do we see why, evidence
would even be necessary. The question is whether "collecting information
about the behavior of a user" is an abstract idea. "[T]he decisional
mechanism courts now apply [ to help answer that question] is to examine
earlier cases in which a similar or parallel descriptive nature can be seen-
what prior cases were about, and which way they were decided." Amdocs
(Isr.) Limited v. Openet Telecom, Inc., 841 F.3d 1288, 1294 (Fed. Cir. 2016).
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In that regard, when "the focus of the asserted claims" is "on collecting
information, analyzing it, and displaying certain results of the collection and
analysis," the claims are directed to an abstract idea. Elec. Power Grp., LLC
v. Alstom S.A., 830 F.3d 1350, 830 (Fed. Cir. 2016). "[C]ollecting
information, including when limited to particular content ( which does not
change its character as information), [is] within the realm of abstract ideas."
Id. See also Content Extraction & Transmission LLC v. Wells Fargo Bank,
Nat'! Ass 'n, 776 F.3d 1343, 1347 (Fed. Cir. 2014).
The Appellants next argue that "the pending claims are not directed to
merely collecting information about the behavior of a user." App. Br. 10.
That is true. As the Appellants point out (App. Br. 10), claim 1, for
example, includes many additional limitations that go beyond collecting
information about the behavior of a user. But how do these additional
limitations make the claimed subject matter any less abstract? The
Appellants do not explain.
In addition to collecting information, claim 1 calls for, inter alia,
(a) receiving authorization; (b) associating the collected information with
types of parties; ( c) receiving questions from predefined questions entered
via a text box by a party; ( d) determining whether a party is authorized to
receive answers; ( e) receiving authorization to provide answers; and,
(f) transmitting answers which answers do not include any data that
identifies the user. These additional limitations do not make the claimed
subject matter any less abstract. Together they present a scheme whereby a
party receives answers to certain questions based on collected information.
Claim 1 describes what is to be accomplished - without articulating any
assertedly inventive technology for accomplishing said scheme. "Generally,
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a claim that merely describes an 'effect or result dissociated from any
method by which [it] is accomplished' is not directed to patent-eligible
subject matter." Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229 (Fed. Cir.
2016) (quoting Internet Patents Corp. v. Active Network, Inc., 790 F.3d
1343, 1348 (Fed. Cir. 2015)). Cf Credit Acceptance Corp. v. Westlake
Services, LLC, 859 F.3d 1044, 1057 (Fed. Cir. 2017):
Significantly, the claims do not provide details as to any non-
conventional software for enhancing the financing process.
Intellectual Ventures I LLC v. Capital One Fin. Corp., 850 F.3d 1332,
1342 (Fed. Cir. 2017) (explaining that "[o]ur law demands more" than
claim language that "provides only a result-oriented solution, with
insufficient detail for how a computer accomplishes it"); Elec. Power
Grp., 830 F.3d at 1354; (explaining that claims are directed to an
abstract idea where they do not recite "any particular assertedly
inventive technology for performing [ conventional] functions").
Next, the Appellants conclude that "the Examiner has not met the
initial burden of establishing a prima facie case of patent-ineligible subject
matter under 35 U.S.C. § 101 based on the lack of any evidence, much less a
preponderance of the evidence." App. Br. 10. We disagree with that
conclusion for the reasons stated.
Next, the Appellants return to the Office guidance, reiterating the
Alice two-step analytical framework. App. Br. 10-11. We have no dispute
with that. And we agree that "each of the claims is clearly directed to one of
the four statutory categories." App. Br. 11.
"Appellants respectfully submit that claim 1 is not directed to any of
the identified categories of abstract ideas." App. Br. 11. But the question is
not whether claim 1 fits in a category of abstract ideas but whether "the
claims at issue are directed to a patent-ineligible concept," such as an
abstract idea. Alice, 134 S. Ct. at 2355. We agree with the Examiner's
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characterization of what claim 1 is directed to - albeit, as the Appellants
have shown, the concept to which claim 1 is directed to can be characterized
at a lower level of abstraction. Cf Apple, Inc. v. Ameranth, Inc., 842 F.3d
1229, 1240-41 (Fed. Cir. 2016) ("An abstract idea can generally be
described at different levels of abstraction. As the Board has done, the
claimed abstract idea could be described as generating menus on a computer,
or generating a second menu from a first menu and sending the second menu
to another location. It could be described in other ways, including, as
indicated in the specification, taking orders from restaurant customers on a
computer."). Irrespective of how it is characterized, for the reasons
discussed, claim 1 is directed to an abstract idea (be it collecting consumer
behavior information, as the Examiner characterizes it, or collecting such
information and providing answers to certain questions based on it, as the
Appellants suggest it is).
We note the Appellants' statement: "The features of claim 1
particularly are directed to a method or process of dynamically determining
answers to specific questions based on information to provide targeted offers
without divulging private information (e.g., when not authorized to do so)."
App. Br. 11. That is not an accurate statement. Claim 1 makes no mention
of dynamically determining answers or providing targeted offers without
divulging private information.
Finally, the Appellants again repeat much of what is claimed,
concluding that
[ t ]he features of the claim address a real world problem of
determining the answers based on the information when the third
party is authorized to receive the answers, wherein the answers do not
include any data that identifies the user and transmitting the answer to
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the third party device. This amounts to significantly more than simply
organizing human activity.
App. Br. 12. But the question is whether claim 1 is directed to an abstract
idea. For the reasons discussed, the Appellants' arguments are unpersuasive
as to error in the Examiner's determination that claim 1 is directed to an
abstract idea.
We now tum to step two.
Step two is "a 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."' Alice, 134 S. Ct. at 2355 ( quoting Mayo Collaborative
Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 73 (2012)).
In that regard, the Examiner determined:
The elements of the process of Claim 1 are: receiving, by a
server, authorization to collect information, collecting the information,
receiving, by a server, predefined questions or questions entered in a
text box about a user, determining whether the requester is authorized
to receive answers to the questions, determining the [sic]. The
elements of the instant process, when taken alone, each execute in a
manner routinely and conventionally expected of these elements.
The elements of the instant process, when taken in combination,
together do not offer substantially more than the sum of the functions
of the elements when each is taken alone. That is, the elements
involved in the recited process undertake their roles in performance of
their activities according to their generic functionalities which are
well-understood, routine and conventional. The elements together
execute in routinely and conventionally accepted coordinated manners
and interact with their partner elements to achieve an overall outcome
which, similarly, is merely the combined and coordinated execution of
generic computer functionalities which are well-understood, routine
and conventional activities previously known to the industry.
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The claims as a whole, do not amount to significantly more
than the abstract idea itself. This is because the claims do not [effect]
an improvement to another technology or technical field; the claims
do not amount to an improvement to the functioning of a computer
itself; and the claims do not move beyond a general link of the use of
an abstract idea to a particular technological environment. This is
further evidenced by para. 1 of the Applicants['] specification that
states the invention allows entities to collect behavior information to
provide improved targeted offers. This may represent an
improvement to a business process, but not an improvement to
another technology or technical field or to the functioning of a
computer itself.
The claim merely amounts to the application or instructions to
apply the abstract idea (i.e. data collection) on a computer, and is
considered to amount to nothing more than requiring a generic
computer system (e.g. a generic processor) to merely carry out the
abstract idea itself. As such, the claims when considered as a whole,
are nothing more than the instruction to implement the abstract idea in
a particular, albeit well-understood, routine and conventional
technological environment.
Final Rej. 3--4.
The "Appellants respectfully submit that the claim elements, taken as
a whole, amount to significantly more than an abstract idea itself under part
(2B) of the Mayo test." App. Br. 12. The Appellants then again repeat
much of claim 1. According to the Appellants, "the features of claim 1
provide a unique method for determining whether a third party is authorized
to receive answers to questions" (App. Br. 13) and, like DDR Holdings, LLC
v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014), the solution "is
necessarily rooted in computer technology in order to overcome a problem
specifically arising in the realm of computer networks" (Id. at 1258-1259).
The Appellants' argument that claim 1 provides a solution necessarily
rooted in computer technology in order to overcome a problem specifically
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arising in the realm of computers is belied by the intrinsic evidence. As the
Examiner has determined, claim 1 covers the use of conventional devices.
See e.g., Spec. para. 18. The devices are conduits for practicing the abstract
idea. Cf In re TL! Commc'ns LLC Patent Litig., 823 F.3d 607, 612 (Fed.
Cir. 2016):
[P]ut differently, the telephone unit itself is merely a conduit for the
abstract idea of classifying an image and storing the image based on
its classification. Indeed, the specification notes that it "is known"
that "cellular telephones may be utilized for image transmission," id.
at col. 1 11. 31-34, and existing telephone systems could transmit
pictures, audio, and motion pictures and also had "graphical
annotation capability," id. at col. 1 11. 52-59.
We see nothing in the claim to suggest a solution necessarily rooted in
computer technology in order to overcome a problem specifically arising in
the realm of computers.
Next the Appellants cite Office guidance and argue that "the features
of claim 1, taken together as an ordered combination amount to significantly
more than any alleged abstract idea of organizing human activity, as alleged
in the Final Office Action." App. Br. 13. Why that is so is unexplained. A
plain reading of the claim shows each step performed via a conventional
device for its common function. For example, claim 1 calls for "collecting,
by the server device, the information from the data source, wherein the
collected information comprises at least one of retail, travel or service
information." But servers are well-known and collecting information is a
function they are commonly known to perform. The elements of the
claims-both individually and when combined----do not transform the
abstract idea into a patent-eligible application of the abstract idea. They are
readily understood as adding conventional computer components to well-
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known information-processing steps. Cf Alice, 134 S. Ct. at 2358 ("Stating
an abstract idea while adding the words 'apply it with a computer' "is not
enough for patent eligibility) (quoting Mayo, 566 U.S. at 72-73).
We have considered all the Appellants' arguments but find them
unpersuasive as to error in the Examiner's step 2 determination that claim 1
does not include an element or combination of elements sufficient to ensure
that the claimed subject matter in practice amounts to significantly more
than to be upon the ineligible abstract idea itself.
We have considered all of the Appellants' remaining arguments and
have found them unpersuasive. Accordingly, because representative
claim 1, and claims 2-3, 5-15, and 17-20, which stand or fall with claim 1,
are directed to an abstract idea and do not present an "inventive concept,"
we sustain the Examiner's determination that they are directed to ineligible
subject matter under 35 U.S.C. § 101. Cf LendingTree, LLC v. Zillow, Inc.,
656 F. App'x 991, 997 (Fed. Cir. 2016) ("We have considered all of
Lending Tree's remaining arguments and have found them unpersuasive.
Accordingly, because the asserted claims of the patents in suit are directed to
an abstract idea and do not present an 'inventive concept,' we hold that they
are directed to ineligible subject matter under 35 U.S.C. § 101.").
The rejection is sustained.
The rejection of claims 1-3, 5, 6, 8-15, 17, and 18 under 35 USC §§102(a)
and (e) as being anticipated by Landis.
We agree with the Appellants that the Examiner has not presented a
prima facie case of anticipation. App. Br. 15-16. All the claims require, for
example, receiving a question "entered via a text box." See independent
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claims 1, 8, and 14. There is no text box mentioned in Landis. Accordingly,
Landis does not expressly described what is claimed.
The Examiner cites "Landis para. 3 8 that teaches the third parties can
issue queries to the platform." Final Rej. 6. "The examiner considers a
query for a particular type of user to be receiving question entered via a text
box." Final Rej. 6. However, under principles of inherency, when a
reference is silent about an asserted inherent characteristic (i.e., a "text
box"), it must be clear that the missing descriptive matter is necessarily
present in the thing described in the reference, and that it would be so
recognized by persons of ordinary skill. Continental Can Co. v. Monsanto
Co., 948 F.2d 1264, 1268 (Fed. Cir. 1991). We do not see that Landis
necessarily uses a text box to enter a question. It is possible that Landis
employs a text box but "[i]nherency, however, may not be established by
probabilities or possibilities. The mere fact that a certain thing may result
from a given set of circumstances is not sufficient." Hansgirg v. Kemmer,
102 F.2d 212,214 (CCPA 1939), quoted in Continental Can Co., 948 F.2d
at 1269.
The rejection is not sustained.
The rejection of claims 7, 19, and 20 are rejected under 35 USC§ 103(a)
as being unpatentable over Landis and Carpenter.
The dependent claims 7, 19, and 20 include the text box limitation
recited in the corresponding independent claims from which they depend.
The Examiner's position that Landis describes said text box applies to these
claims as well. Because Landis does not in fact describe said text box, and
no other evidence is relied upon as prior art to establish that one of ordinary
skill would have been led to include such a text box in Landis and thereby
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reach what is claimed, a prima facie case of obviousness for these claims has
not been established in the first instance.
The rejection is not sustained.
CONCLUSION
The rejection of claims 1-3, 5-15, and 17-20 under 35 U.S.C. § 101
as being directed to judicially-excepted subject matter is affirmed.
The rejection of claims 1-3, 5, 6, 8-15, 17, and 18 under 35 U.S.C.
§ § 102( a) and ( e) as being anticipated by Landis is reversed.
The rejection of claims 7, 19, and 20 under 35 U.S.C.
§ 103(a) as being unpatentable over Landis and Carpenter is reversed.
DECISION
The decision of the Examiner to reject claims 1-3, 5-15, and 17-20 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
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