Ex Parte Samson et al

Patent Trials and Appeals Board

May 15, 2019

11786135 - (D) (P.T.A.B. May. 15, 2019)

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.
11/786,135 04/11/2007 Ben Simon Samson PPSC0101 PUS1 8895
22045 7590 05/17/2019
Rrnnks; Knshman EXAMINER
1000 Town Center DURAN, ARTHUR D
22nd Floor
SOUTHFIELD, MI 48075 ART UNIT PAPER NUMBER
3622
NOTIFICATION DATE DELIVERY MODE
05/17/2019 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 @brookskushman. com
kdilucia@brookskushman.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BEN SIMON SAMSON, JEFFREY PAUL LA FOREST, and
ROBERT PRESTON HORNSBY JR.
Appeal 2018-003123
Application 11/786,135
Technology Center 3600
Before MAHSHID D. SAADAT, ALLEN R. MacDONALD, and
JOHN P. PINKERTON, Administrative Patent Judges.
MacDONALD, Administrative Patent Judge.
DECISION ON APPEAL1
STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 24, 26—28, 30—36, 38—45, 47—53, and 55—64. Claims 1—23, 25, 29,
37, 46, and 54 have been cancelled. We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm.
1 Appellants indicate the real party in interest is PPS Decision Systems,
LLC. App. Br. 2.
Appeal 2018-003123
Application 11/786,135
Representative Claim
Representative claim 24 under appeal reads as follows (emphasis
added):
24. A computer system for offering items for sale to
consumers comprising a computer having a non-transitory
memory for storing machine instructions that are to be executed
by the computer, the machine instructions when executed by
the computer implement the following functions:
collecting consumer information relating to a
consumer’s interactions with a website offering items for
auction and including bidding history of the consumer over
two or more auctions;
storing the consumer information in a consumer
database;
generating an incentive amount for an unsold item
based on the consumer information relating to the
consumer’s interactions with the website offering the items
for auction and including the bidding history of the consumer
over two or more auctions; and
delivering via a computer network an incentive including
the generated incentive amount to the consumer to induce
purchasing of the unsold item.
App. Br. 122 (Claims Appendix 1).
Rejections on Appeal
1. The Examiner rejected claims 24, 26—28, 30, 35, 36, 40, 41, 43—45,
48—50, 52, 53, and 56—64 under 35 U.S.C. § 103(a) as being unpatentable
over Rackson et al. (US 2002/0165817 Al; published Nov. 7, 2002)
2 The Claims Appendix of Appellants’ Appeal Brief is separately numbered.
2
Appeal 2018-003123
Application 11/786,135
(“Rackson”) and Bezos et al. (US 6,606,608 Bl; issued Aug. 12, 2003)
(“Bezos”).3 See Ans. 5.
2. The Examiner rejected claims 31—34, 38, 39, 47, and 55 under 35
U.S.C. § 103(a) as being unpatentable over Rackson, Bezos, and Goldhaber
et al. (US 5,794,210 A; issued Aug. 11, 1998) (“Goldhaber”).4 See Ans. 18.
3. The Examiner rejected claim 42 under 35 U.S.C. § 103(a) as being
unpatentable over Rackson, Bezos, and Deaton et al. (US 5,687,322 A;
issued Nov. 11, 1997) (“Deaton”). See Ans. 20.
4. The Examiner rejected claim 51 under 35 U.S.C. § 103(a) as being
unpatentable over Rackson, Bezos, and Gerace (US 5,848,396 A; issued
Dec. 8, 1998) (“Gerace”). See Ans. 21.
5. The Examiner rejected claims 24, 26—28, 30—36, 38—45, 47—53, and
55—64 under 35 U.S.C. § 101 for being directed to patent-ineligible subject
matter. See Ans. 3,5.
Issues on Appeal
Did the Examiner err in rejecting claims 24, 31, 43, 50, and 60 as being
obvious?
3 The patentability of claims 26—28, 30, 35, 36, 38—42, 44, 45, 47^49, 51—53,
55—59, and 61—64 is not separately argued from that of claim 24, 43, 50, and
60. See App. Br. 9—10. Accordingly, except for our ultimate decision, the
rejection of claims 26—28, 30, 35, 36, 38-42, 44, 45, 47-49, 51—53, 55—59,
and 61—64 under 35 U.S.C. § 103(a) is not discussed further herein.
4 The patentability of claims 32—34 is not separately argued from that of
claim 31. See App. Br. 9—10. Accordingly, except for our ultimate decision,
the rejection of claims 32—34 under 35 U.S.C. § 103(a) is not discussed
further herein.
3
Appeal 2018-003123
Application 11/786,135
Did the Examiner err in rejecting claims 24, 26—28, 30-36, 38-45, 47—
53, and 55—64 as being directed to patent-ineligible subject matter?
ANALYSIS
A. Section 103 Case Law
The mere existence of differences between the prior art and the claim
does not establish non-obviousness. See Dann v. Johnston, 425 U.S. 219,
230 (1976). Instead, the relevant question is “whether the difference
between the prior art and the subject matter in question is a [difference]
sufficient to render the claimed subject matter unobvious to one skilled in
the applicable art.” Dann, 425 U.S. at 228 (internal quotations and citations
omitted). Indeed, the Supreme Court made clear that when considering
obviousness, “the analysis need not seek out precise teachings directed to the
specific subject matter of the challenged claim, for a court can take account
of the inferences and creative steps that a person of ordinary skill in the art
would employ.” KSR Inti Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
B. Appellants ’ § 103 Arguments
B.l. Claims 24, 43, 50, and 60
Claim 24 recites “collecting consumer information relating to a
consumer’s interactions with a website offering items for auction and
including bidding history of the consumer over two or more auctions,” and
“generating an incentive amount for an unsold item based on the consumer
information relating to a consumer’s interactions with a website offering
items for auction and including the bidding history of the consumer over two
or more auctions.” Claims 43, 50, and 60 are similar to claim 24, but recite
different types of collected information: claim 43 recites “bid frequency
information relating to a consumer’s bidding history with a website offering
4
Appeal 2018-003123
Application 11/786,135
items for auction over two or more auctions;” claim 50 recites “consumer
click stream information relating to a consumer’s interactions with a website
offering items for auction over two or more auctions;” and claim 60 recites
“consumer sensitivity information relating to a consumer’s interactions with
a website offering items for auction over two or more auctions.”
Regarding claim 24, the Examiner found:
Rackson ... discloses generating an incentive advertisement
for an unsold item based on the consumer information relating
to the consumer’s interactions with the website offering the
items for auction and including the bidding history of the
consumer (see Rackson “[0109] The system may collect “market
data” on losing as well as winning bidders so that targeted e-mail
advertising may be directed to the “losers” or the winners of
bids.[”).]
[Rackson] further discloses collecting consumer information
relating to a consumer’s interactions with a website offering
items for auction (Figs. 3, 11, 12, 14; and “[50]. . . The remote
auction service for the purposes of this disclosure, may represent
an auction service portal such as provided by eBay (remote
auction service 12), while auction service 14 may be used to
represent the auction services provided by Yahoo ...” and “[67].
. . In this manner, a plurality of virtual connections may be
established between the remote auction service (web site for
Internet-based auctions) for each item’s web page and the multi­
auction service ...”; [).]
Rackson further discloses and including bidding history of the
consumer ([109]) over two or more auctions (“[14]. . . For
example, if the highest bidder has a questionable credit rating or
closing history .... A database of bidder performance statistics
(closing rates, timeliness, seller feedback, etc ... ”), “[78]. . . the
highest bidder may have a questionable credit rating or closing
history, or the highest bidder may ... A database of bidder
performance statistics (closing rates, Timeliness, seller feedback,
etc.) can be factored into the "optimal bid" selection process in
order to determine an adjusted bid ... ”; “[113]. . . The system
5
Appeal 2018-003123
Application 11/786,135
may review the bidding history of the bidders involved in a
particular auction at a remote auction service to determine from
past bidding, how likely these bidders are to win . . .The multi­
auction service can perform additional analysis on the bid history
for that item and review prior bid history by current bidders at
step 644 on other objects to determine whether the competing
bidders are operating under control of a programmed bidding
strategy where the maximum bid for the bidder may be
determined from their prior bid activity
Hence, Rackson clearly discloses collecting consumer
information relating to a consumer’s interactions with a
website offering items for auction and including bidding
history of the consumer over two or more auctions.
Rackson does not explicitly disclose generating an incentive
amount for an unsold item based on the consumer information
... and including the bidding history of the consumer over two
or more auctions. That is, Rackson discloses a targeted ad or
incentive ad based on consumer interaction with the website
auction and also the bidding history. And, Rackson discloses
tracking bidding history over two or more auctions. Rackson
does not explicitly disclose that the targeted/incentive ad
includes an incentive amount or that the bidding history is
Rackson’s bid history over two or more auctions. However,
Bezos discloses generating an incentive amount for an unsold
item based on the consumer information relating to the
consumer’s interactions with the website offering the items for
auction and including the bidding history of the consumer over
two or more auctions (Figs. 4, 5; 5:15-45, “For example, the
auction system may offer to a bidder who has won 5 auctions a
10% discount (limited to some maximum discount) on the next
auction in which that bidder places the first bid. Such a discount
would reward active bidders and would encourage continued
participation in auctions. Other participants in such an auction
may not even know that the first bidder is eligible to receive a
discount. As other examples, the auction system may offer a
discount to first time bidders, to bidders who match a certain
demographic (e g., senior citizens), or to bidders based on their
6
Appeal 2018-003123
Application 11/786,135
bidding or selling history (e.g., seller or bidder in a certain
number of auctions or in auctions of a certain dollar amount).”).
Ans. 25—28 (emphasis modified).
Further, regarding claims 43, 50, and 60, the Examiner found:
[T]he variations in the certain consumer information is addressed
in each of the responses following.
[In] further regards to claim 43, Rackson discloses “at least bid
frequency information relating to a consumer's bidding
history” ([108], “reporting and auction status functionality
where the seller or buyer ... The statistics on the bid history may
be reviewed .. .frequency of bids”; [69], “ ... and frequency of
bidding activity... ”. And, note in the explanation in the rejection
above how other market data can be used for the targeting.
And, as explained above, this frequency information is market
data as data related to the bidders and auction activity. Hence,
the targeting can occur on the market data as bid frequency
information).
And, in further regards to claim 50, Rackson discloses “click
stream information relating to a consumer’s interactions with
a website offering items for auction”. Examiner notes that
Appellant’s Specification discloses click stream at only one
found location and as follows: “[22] ... Preferably, the browsing
behavior 11 has click stream information, which includes other
components of the auction site that were visited by the consumer,
number of pages visited, time spent on each page during each
visit per each auction, number of auctions visited/participated,
and frequency of revisiting auctions.” And, note that click
stream information includes auctions history information
including number of auctions and frequency of auctions
information. And, Rackson discloses click stream information
as auctions history and activity information for a particular
bidder (see bidder history and frequency citations preceding;
also, see Fig. 14 at item 550 for win % for a particular bidder
which requires number of auctions information and notes on
7
Appeal 2018-003123
Application 11/786,135
bidder information at item 546; also, see [115] for win% for a
particular bidder which requires number of auctions information,
“[115]... For example, the win percentage 550 may be calculated
based on how often that bidder wins when bidding on similar or
other types of items.”). Hence, the targeting can occur on the
market data as click stream information.
And, in regards to claim 60, Rackson discloses the actual claim
language of, “collecting consumer sensitivity information
relating to a consumer’s interactions with a website offering
items for auction;”. See Applicant’s Spec at [24] for a
description of consumer sensitivity information which can
include price sensitive or brand sensitive or feature sensitive or
time sensitive.
And, Rackson discloses “consumer sensitivity information” as
a further description of “consumer information” (This reads
on price sensitive or brand sensitive or feature sensitive: Fig.
12, shows at item 422 whether the bidder is particular
manufacturer sensitive or not and at item 418 condition of the
item sensitive or not and at item 416 the level of price sensitivity
and at item 420 the quantity sensitivity; this reads on feature
sensitive: Fig. 14, shows at item 502 whether the bidder is push
or powered sensitive or not; this reads on brand sensitive: also
see [112] for manufacturer or brand sensitivity “[112] ... For
example, if the user prefers product manufactured by one
manufacturer, the user may specify that preference 422, whether
the bidder will accept near substitutes 424, and whether a
premium 430 will be paid for one brand or another.”; this reads
on time sensitivity: “[112] ... An ending date and time for the
bidding on this item type may be specified by the bidder using a
calendar-like interface 412, or a default timeframe may be
specified by the multi-auction server, or open ended bidding
maybe defined to end on successful acquisition of the item ...”).
Also, note the citations and explanation above for the variety of
marketing data that can be used for targeting. And, consumer
sensitivity information is another form of market data on a
bidder. Hence, the targeting can occur on the market data as
consumer sensitivity information.
8
Appeal 2018-003123
Application 11/786,135
Ans. 29—31 (emphasis modified).
Appellants raise the following arguments in contending that the
Examiner erred in rejecting claims 24, 43, 50, and 60 under 35 U.S.C.
§ 103(a):
The “market data ” disclosed in Rackson is not the information
collected by the claimed computer systems. For example,
Rackson is silent on the collection of bidfrequency information
relating to a consumer’s bidding history, as recited in claim 43.
The disclosed “market data” only tracks losers or winners of
bids. This does not teach or suggest bidding frequency. Whether
a consumer wins or loses an auction does not reveal the
frequency of their bids. As another example, Rackson is silent
on click stream information relating to a consumer’s
interactions with a website, as recited in claim 50. Rather,
Rackson collects data on losers or winners of bids. Rackson does
not disclose or suggest the collection of any data using a click
stream. The Examiner’s argument otherwise is complete
speculation. Claim 60 recites collecting consumer sensitivity
information, including product or price sensitivity. Rackson
does not track or use consumer sensitivity information. It
simply uses win/lose data to send out an e-mail to market
products. Bezos does not cure the defective teachings of
Rackson with respect to independent claims 43, 50 and 60 and
the associated dependent claims. Bezos simply discloses an
auction system that “may offer to a bidder who has won 5
auctions a 10% discount.” 5: 15-45. This discount applies to how
many auctions a bidder has won. It does not relate to bid
frequency (claim 43), click stream information (claim 50), or
consumer sensitivity information (claim 60). For at least these
reasons, the rejection of these claims should be overturned.
Claim 24 recites the collection of consumer information relating
to a consumer’s interactions with a website offering items for
auction and including bidding history of the consumer over two
or more auctions. . . . The Examiner attempts to apply Bezos for
a teaching of generating an incentive amount for an unsold item
based on the consumer information relating to the consumer’s
interactions with the website offering the items for auction and
9
Appeal 2018-003123
Application 11/786,135
including the bidding history of the consumer over two or more
auctions. Bezos discloses that a “seller or bidder in a certain
number of auctions or in auctions of a certain dollar amount”
may get a discount. Bezos also discloses that “the auction system
may offer to a bidder who has won 5 auctions a 10% discount. .
. on the next auction.” However, Bezos does not disclose or
suggest the claimed collected consumer information. The
claimed consumer information includes bidding history of a
consumer over two or more auctions. According the claimed
consumer information must also include addition consumer
information relating to a consumer’s interactions with a website.
The Examiner has not shown and cannot show that Bezos
discloses the required consumer information, which includes
more than bidding information over two or more auctions. For
at least this reason, this rejection should be overturned with
respect to claim 24 and associated dependent claims.
App. Br. 8—9 (emphasis modified).
Appellants’ arguments do not persuasively establish that the Examiner
erred. As the Examiner correctly found, Rackson discloses a multi-auction
system that collects bidder information, including frequencies of bids by
bidders. See Ans. 29 (citing Rackson || 69, 108). Thus, Rackson does
teach “collecting . . . bid frequency information relating to a consumer’s
bidding history with a website offering items for auction,” as recited in claim
43.
Further, as also correctly found by the Examiner, Appellants’
Specification defines “click stream information” as including “number of
auctions visited/participated, and frequency of revisiting auctions,” and
Rackson discloses collecting information regarding a number of auctions
that a user participates in and a number of auctions that a user wins and
calculating a win percentage for that user based on the collected information.
See Ans. 29—30 (citing Spec. 6:7—10; Rackson 1115). Thus, consistent with
10
Appeal 2018-003123
Application 11/786,135
that description, Rackson teaches “collecting consumer click stream
information relating to a consumer’s interactions with a website offering
items for auction,” as recited in claim 50.
As the Examiner also correctly found, Appellants’ Specification
defines “consumer sensitivity information” as including classification
categories of a consumer’s sensitivity to items for auction, such as price
sensitivity, brand sensitivity, time sensitivity, and feature sensitivity, and
Rackson discloses collecting preferences of a bidder, such as time
preferences, price preferences, manufacturer preferences, substitute
preferences, and premium preferences. See Ans. 30-31 (citing Spec. 6:23—
7:24; Rackson 1112). Thus, Rackson also teaches “collecting consumer
sensitivity information relating to a consumer’s interactions with a website
offering items for auction,” as recited in claim 60.
Regarding claim 24, as the Examiner correctly found, Rackson
discloses the multi-auction system directing targeted e-mail advertisements
to auction losers based on collected market data and further discloses
collecting bidding history of bidders. See Ans. 25—26 (citing Rackson || 14,
78, 109, 113). As the Examiner also correctly found, Bezos discloses
offering a discount to a bidder based on the bidding history of the bidder.
See Ans. 27 (citing Bezos 5:15—15, Figs. 4, 5). Thus, the combination of
Rackson and Bezos teaches or suggests “collecting consumer information
relating to a consumer’s interactions with a website offering items for
auction and including bidding history of the consumer over two or more
auctions,” and “generating an incentive amount for an unsold item based on
the consumer information relating to a consumer’s interactions with a
website offering items for auction and including the bidding history of the
11
Appeal 2018-003123
Application 11/786,135
consumer over two or more auctions,” as recited in claim 24. We agree with
the Examiner that claim 24 does not require additional consumer
information beyond the claimed “bidding history” (see Ans. 34), and thus,
Appellants’ argument that Bezos fails to teach or suggest consumer
information which includes more information that bidding information is not
persuasive.
Accordingly, Appellants have not shown the Examiner erred in
rejecting claims 24, 43, 50, and 60 under 35 U.S.C. § 103(a).
B.2. Claim 31
Claim 31 recites “collecting consumer information relating to a
consumer’s interactions with a website offering items for auction and
including browsing data of the consumer over two or more auctions,” and
“generating an incentive amount for an unsold item based on the consumer
information relating to the consumer's interactions with the website offering
the items for auction and including the browsing data of the consumer over
two or more auctions.” Regarding claim 31, the Examiner found:
In regards to claim 31, Rackson discloses the above. And, as
noted above, Rackson discloses using websites (Fig. 3; [50, 55])
tracking user history ([12, 14, 113]) and targeting the user
([109]). Rackson does not explicitly disclose wherein the
consumer information includes browsing data. However,
Goldhaber discloses users participating in auctions and bidding
(Figs. 14, 15; 19:19-35; 20:35-55) users using the Intemet/World
Wide Web for viewing content (7:30-40, “ ... plus automatic
tracking of her previous Internet usage ... ”; 8:50-55, “The World
Wide Web allows anyone to maintain public “home pages” that
are visible to all. . . ”) and tracking user viewing/browsing
history (7:30-40, “ ... plus automatic tracking of her previous
Internet usage ....”; 8:40-50, “The present invention can provide
“points of interest” that establish a mechanism for tracking all
consumption and viewing ... ”; 16:25-35, “ ... The software agent
12
Appeal 2018-003123
Application 11/786,135
110 and/or the attention brokerage server 106 may remove from
the list of matches all ads that the consumer has already viewed
(or has viewed within a particular time frame) (FIG. 11 A, block
186).”; 6:45-61, “The demographic profiles can be constructed
through interest questionnaires that the consumer completes
when subscribing to the service, and also through electronic
tracking of his/her usage of the service (and other habits). Thus,
the profiles can be dynamic, evolving with the customer's
transaction history. A customer can choose to exclude any
transaction (e.g .. viewing of certain material or purchasing of
certain products) from his profile ... ”) and targeting a user based
on viewing history (6:24-31). Hence, Goldhaber clearly
discloses wherein the consumer information includes browsing
data.
Ans. 40-41 (emphasis modified).
Appellants raise the following arguments in contending that the
Examiner erred in rejecting claim 31 under 35 U.S.C. § 103(a).
The Examiner admits that Rackson does not explicitly disclose
consumer information that includes browsing information. The
Examiner attempts to apply Goldhaber for a teaching of this
limitation. . . .
However, [column 6, lines 24—31 of Goldhaber cited by the
Examiner] only discloses the storage of demographic profiles of
potential viewers. It does not disclose or suggest “viewing
history, ” as urged by the Examiner. For at least this reason, it
also does not disclose the “browsing information ” recited in the
claims.
At best, [column 6, lines 45—61 of Goldhaber cited by the
Examiner] discloses electronic tracking of service usage. The
Examiner has not shown and cannot show that “service usage”
discloses the recited browser information. Goldhaber does not
disclose “how” the “service usage” is collected, and it is mere
speculation to argue that it is collected using “browsing
information.” For at least these reasons, the rejection of these
claims should be overturned.
13
Appeal 2018-003123
Application 11/786,135
App. Br. 9—10 (emphasis added).
We are not persuaded the Examiner erred. As previously described,
the Examiner correctly found that Rackson discloses the multi-auction
system directing targeted e-mail advertisements to auction losers based on
collected market data, and that Bezos discloses offering a discount to a
bidder based the bidding history of the bidder. See Ans. 25—27, 40 (citing
Rackson || 14, 78, 109, 113; Bezos 5:15—15, Figs. 4, 5). As further
correctly found by the Examiner, Goldhaber discloses a system that
electronically tracks a consumer’s usage of an electronic service in order to
construct a demographic profile for the consumer. See Ans. 40-41 (citing
Goldhaber 6:46—51). Thus, the combination of Rackson, Bezos, and
Goldhaber teaches or suggests “collecting consumer information relating to
a consumer’s interactions with a website offering items for auction and
including browsing data of the consumer over two or more auctions,” and
“generating an incentive amount for an unsold item based on the consumer
information relating to the consumer's interactions with the website offering
the items for auction and including the browsing data of the consumer over
two or more auctions,” as recited in claim 31. Accordingly, Appellants have
not shown the Examiner erred in rejecting claim 31 under
35U.S.C. § 103(a).
C. Section 101 Rejection
Subsequent to the Examiner’s decision to reject claims 24, 26—28, 30—
36, 38-45, 47—53, and 55—64 under 35 U.S.C. § 101, the United States
Patent and Trademark Office (USPTO) published revised guidance on the
application of 35 U.S.C. § 101. USPTO’s January 7, 2019 Memorandum,
14
Appeal 2018-003123
Application 11/786,135
2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50,
50-57 (Jan. 7, 2019) (“Revised Guidance”).
The Examiner’s rejection merely lists numerous “examples of abstract
ideas with[in] the July 2015 101 update” (Final Act. 6), states selected claim
language is directed to an abstract idea (Final Act. 7, lines 13—15), and
without further meaningful analysis concludes “[t]his is similar to the
non-limiting abstract idea examples above” (Final Act. 7, line 14).
Thus, upon review of the Examiner’s analysis in support of the
rejection of the aforementioned claims under 35U.S.C. § 101 (see Final
Act. 6—8; see also Ans. 22—24), we do not sustain the rejection because the
Examiner’s articulated reasoning is not sufficient to establish that the claims
recite an abstract idea that falls within one of the three enumerated
categories of abstract ideas (i.e., mathematical concepts, certain methods of
organizing human activity, or mental processes).
Because the aforementioned claims are not patentable in light of the
sustained rejection under 35 U.S.C. § 103(a), we exercise our discretion to
not reach eligibility of the claims under the Revised Guidance.5 Instead, we
leave the review of the aforementioned claims under the Revised Guidance
to the Examiner in the event of further prosecution of the claims.
5 Given that in this instance, a determination that these claims are not patent
eligible under 35 U.S.C. § 101 based on the Revised Guidance would
necessitate a new ground of rejection under 35 U.S.C. § 101.
15
Appeal 2018-003123
Application 11/786,135
CONCLUSIONS
(1) The Examiner has not erred in rejecting claims 24, 26—28, 30—36,
38-45, 47-53, and 55-64 under 35 U.S.C. § 103(a).
(2) Appellants have established that the Examiner erred in rejecting
claims 24, 26—28, 30-36, 38—45, 47—53, and 55—64 under 35 U.S.C. § 101.
(3) Claims 24, 26—28, 30-36, 38-45, 47—53, and 55—64 are not
patentable.
DECISION
We affirm the Examiner’s rejections of claims 24, 26—28, 30—36, 38—
45, 47-53, and 55-64 under 35 U.S.C. § 103(a).
We reverse the Examiner’s rejections of claims 24, 26—28, 30-36, 38—
45, 47-53, and 55-64 under 35 U.S.C. § 101.
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
16