Ex Parte Spears

Patent Trial and Appeal Board

Mar 8, 2018

12697013 (P.T.A.B. Mar. 8, 2018)

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.
12/697,013 01/29/2010 Joseph L. Spears 012810-0002-999 1133
759020583
Jones Day
250 Vesey Street
New York, NY 10281-1047
EXAMINER
WILLIS, AMANDA LYNN
ART UNIT PAPER NUMBER
2158
MAIL DATE DELIVERY MODE
03/08/2018 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOSEPH L. SPEARS
Appeal 2017-009838
Application 12/697,0131
Technology Center 2100
Before JAMES R. HUGHES, ERIC S. FRAHM, and
MATTHEW J. McNEILL, Administrative Patent Judges.
McNEILL, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1—9, 11—19, 21—33, 35—43, and 45—55, which are all the
claims pending in this application.2 We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm.
1 According to Appellant, the real party in interest is IPAR, LLC of San
Francisco, California. App. Br. 1.
2 Claims 10, 20, 34, and 44 were canceled by amendments on May 13, 2015
and March 25, 2016.
Appeal 2017-009838
Application 12/697,013
STATEMENT OF THE CASE
Introduction
Appellant’s application relates to dynamic generation of multiple
content alternatives to offer users of content management systems. See
Spec. 2:25—3:15. Claim 1, reproduced below, is illustrative of the claimed
subject matter:
1. A method, comprising:
receiving, using one or more processors, (i) data or
metadata for first content, or (ii) data or metadata for content
related to the first content;
generating a first alternative corresponding to the first
content, wherein the first alternative is based upon the (i) data or
metadata for the first content, or (ii) data or metadata for content
related to the first content, and wherein the first alternative
includes an offer to license the first content or the content related
to the first content, the offer including a set of one or more
licensing terms to be accepted by a user including a first price;
generating a second alternative corresponding to the first
content or an enhanced content, wherein the second alternative
includes an offer to license the first or enhanced content for a
second price;
receiving a selection of the first alternative by a user,
wherein the selection of the first alternative generates (i) first
additional data or metadata for the first content, or (ii) first
additional data or metadata for content related to the first content;
upon selection of the first alternative by the user,
providing content associated with the first alternative to the user;
following payment of the first price and receipt of the first
content by the user, dynamically generating an upsell or cross-
sell alternative based on the selection of the first alternative,
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wherein the upsell or cross-sell alternative is based upon the
generated (i) first additional data or metadata for the first content,
or (ii) first additional data or metadata for content related to the
first content, and wherein the upsell or cross-sell alternative
includes a second offer to license the first or enhanced content,
the second offer including a set of one or more licensing terms to
be accepted by the user including an upsell or cross-sell price;
upon selection of the upsell or cross-sell alternative by the
user, suspending the first alternative, wherein said suspending is
for a length of time that is based on a period of time indicated in
the one or more licensing terms of the upsell or cross-sell
alternative, wherein said suspending halts access to the first
content by the user in favor of the first or enhanced content of
the upsell or cross-sell alternative for the period of time; and
automatically reinstating the first alternative upon
completion of the upsell or cross-sell alternative, wherein said
automatically reinstating restores access to the first content to the
user when the upsell or cross-sell alternative is completed.
The Examiner’s Rejections
Claims 1—9, 11—19, 21—33, 35—43, and 45—55 stand rejected under
35 U.S.C. § 101 as being directed to patent-ineligible subject matter.
Final Act.3 2—3.
Claims 1, 2, A-9, 11-19, 21-26, 28-33, 35^13, 45-52, 54, and 55
stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Walker
(US 2005/0027622 Al; Feb. 3, 2005) and Yen (US 7,464,058 B2; Dec. 9,
2008). Final Act. 4-22.
Claims 3, 27, and 53 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Walker, Yen, and Moore (US 2003/0078875 Al; Apr. 24,
2003). Final Act. 23-24.
3 The Final Rejection mailed May 16, 2016.
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Application 12/697,013
ANALYSIS
Patent-Ineligible Subject Matter
In Alice, the Supreme Court reiterated the two-step framework set
forth in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 132
S.Ct. 1289 (2012), for determining whether claimed subject matter is
judicially-excepted from patent eligibility under § 101. Alice Corp. v. CLS
Banklnt’l, 134 S.Ct. 2347, 2355 (2014). Assuming that a claim nominally
falls within one of the statutory categories of machine, manufacture, process,
or composition of matter, the first step in the analysis is to determine if the
claim is directed to a law of nature, a natural phenomenon, or an abstract
idea (judicial exceptions). Alice, 134 S.Ct. at 2355. For example, abstract
ideas include, but are not limited to, fundamental economic practices,
methods of organizing human activities, an idea of itself, and mathematical
formulas or relationships. Id. at 2355—57. If the claim is directed to a
judicial exception, such as an abstract idea, the second step is to determine
whether additional elements in the claim ‘“transform the nature of the claim’
into a patent-eligible application.” Id. at 2355 (quoting Mayo, 132 S.Ct. at
1297). This second step is described as “a search for an “‘inventive
concept”’—i.e., an element or combination of elements that is ‘. . .
significantly more than . . . the [ineligible concept] itself.’” Id. at 2355
(alteration in original) (quoting Mayo, 132 S.Ct. at 1294).
Alice Step One
“The first step in the Alice inquiry . . . asks whether the focus of the
claims is on the specific asserted improvement in computer capabilities . . .
or, instead, on a process that qualifies as an ‘abstract idea’ for which
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computers are invoked merely as a tool.” Enfish, LLC v. Microsoft Corp.,
822 F.3d 1327, 1335—36 (2016). “The abstract idea exception prevents
patenting a result where ‘it matters not by what process or machinery the
result is accomplished.’” McRO, Inc. v. Bandai Namco Games America
Inc., 837 F.3d 1299, 1312 (Fed. Cir. 2016) (quoting O’Reilly v. Morse, 56
U.S. (15 How.) 62, 113 (1853)). “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.” McRO,
837 F.3d at 1314.
Appellant contends the claims are “related to a technical improvement
related to a content-access paradigm.” App. Br. 6. In particular, Appellant
identifies prior problems in accessing distributed content where a user
would, for example, rent an SD version of a movie for 30 days and then
further rent an upsell HD version of the movie for 24 hours. Id. In this
example, Appellant asserts the user may be confused in selecting the desired
version if two alternatives were simultaneously available, and the user would
get less value if the SD and HD rentals overlapped, i.e., the user would get a
total of 30 days overall access to the content rather than 30 days plus 24
hours. Id. at 7. According to Appellant, the “suspending the first
alternative” and “reinstating the first alternative” aspects of claim 1 resolve
these problems. Id. 7—8. Appellant argues the Examiner engaged in a
“prohibited simplification in arguing that the claims are directed to ‘the
concept of establishing pricing offers for products’ while ignoring the
technical improvements discussed above, which are explicitly recited in the
claims.” Id. at 8.
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Appellant further contends that even given the Examiner’s stated
abstract idea of “establishing pricing offers for products,” the claims do not
preempt all processes for performing the idea. App. Br. 11. Rather,
Appellant argues, the claims recite a specific upsell/cross-sell paradigm that
provides a narrowly tailored technical solution. Id.
We are not persuaded by Appellant’s arguments. Claim 1 recites
steps for generating first and second alternatives for content at respective
first and second prices, receiving a selection of the first alternative,
providing the selected first alternative to a user, generating an up sell or
cross-sell alternative for a certain price following payment for the first
alternative, suspending the first alternative for a period of time upon
selection of the upsell or cross-sell alternative, and reinstating the first
alternative upon completion of the upsell or cross-sell alternative. In sum,
claim 1 focuses on the idea of generating sales offers to purchase content,
including upselling other content to a customer who has made a purchase
based on an original offer, whereby the original content is suspended during
a period of time when access to the upsold content is available. We find this
idea to be abstract.
We disagree with Appellant that the focus of claim 1 is on a technical
improvement. The mere recitation of “using one or more processors” for the
“receiving” step in claim 1 does not embody an improvement in computer
capabilities as in Enfish. See 822 F.3d at 1336 (“[T]he plain focus of the
claims is on an improvement to computer functionality itself, not on
economic or other tasks for which a computer is used in its ordinary
capacity.”). Rather, the focus of claim 1 is on economic tasks, i.e., making
and completing sales offers. Appellant argues the method of claim 1 reduces
user confusion and provides more value, particularly based on the alleged
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technical solution embodied by the “suspending the first alternative” and
“reinstating the first alternative” steps. See App. Br. 7—8. However, the
alleged benefits provided by the method of claim 1 represent a solution
provided by performing the sales-based abstract idea. That is, even if we
agree with Appellant that performing the method of claim 1 reduces user
confusion and provides more value, this is the result of the abstract idea, not
any particular technical solution. Indeed, claim 1 does not recite how any
specific technology is implemented to perform the “suspending” and
“reinstating” steps.
We also note that although a number of the steps in claim 1 are
performed based upon various “data or metadata,” claim 1 does not
specifically define how any such data or metadata is used to perform the
claimed functions, for example, “generating a first alternative” or
“generating an upsell or cross-sell alternative.” Rather, the focus of claim 1
is on the result of generating the various offers, not how such offers are
generated. Accordingly, claim 1 is distinguishable from the claims in
McRO, where “the claims [were] limited to rules with specific
characteristics” and “the structure of the limited rules reflects a specific
implementation not demonstrated as that which ‘any [animator] engaged in
the search for [an automation process] would likely have utilized.’” 837
F.3d. at 1313, 1316 (alterations to second quotation in original) (quoting
Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 133 S.Ct. 2107,
2119-20 (2013)). That is, the Federal Circuit in McRO based the patent-
ineligibility conclusion in part on the fact that the claimed method for
automatic lip sync animation of 3d characters differed in a specific way from
the prior human method of animation. See id. at 1314. In contrast, claim 1
in the present case provides no specific functionality to differentiate the
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claimed method from a merely automated version of a human method of
making and completing sales offers.
Our finding that claim 1 is directed to an abstract idea is supported by
comparison with other cases where the Federal Circuit has found claims
relating to the manipulation of data to generate other data, including sales
offers, to be directed to abstract ideas, for example, 01P Technologies, Inc.
v. Amazon.com, Inc., 788 F.3d 1359, 1362—63 (Fed. Cir. 2015) (offer-based
price optimization), Intellectual Ventures ILLC v. Capital One Bank (USA),
792 F.3d 1363, 1370 (Fed. Cir. 2015) (tailoring information presented to a
user based on particular information), Versata Development Group v. SAP
Am., Inc., 793 F.3d 1306, 1333 (Fed. Cir. 2015) (“determining a price, using
organizational and product group hierarchies”), Digitech Image
Technologies, LLCv. Electronics For Imaging, Inc., 758 F.3d 1344, 1351
(Fed. Cir. 2014) (employing “mathematical algorithms to manipulate
existing information to generate additional information”), and Accenture
Global Services, GmbHv. Guidewire Software, Inc., 728 F.3d 1336, 1344—
46 (Fed. Cir. 2013) (generating tasks based on rules in response to events).
Finally, we note that preemption is the concern that drives the
exclusionary principle of judicial exceptions to patent-eligible subject
matter. Alice, 134 S.Ct. at 2354. However, preemption is not a separate test
of patent-eligibility, but is inherently addressed within the Alice framework.
SeeAriosa Diagnostics, Inc., v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed.
Cir. 2015) (“While preemption may signal patent ineligible subject matter,
the absence of complete preemption does not demonstrate patent
eligibility.”). Accordingly, Appellant’s argument (App. Br. 11) that claim 1
does not preempt all processes for performing the idea embodied therein is
not, by itself, persuasive of patent-eligibility.
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Alice Step Two
The second step in the Alice analysis requires a search for an
“inventive concept” that “must be significantly more than the abstract idea
itself, and cannot simply be an instruction to implement or apply the abstract
idea on a computer.” Bascom Global Internet Services, Inc. v. AT&T
Mobility LLC, 827 F.3d 1341, 1349 (2016). There must be more than
“computer functions [that] are ‘well-understood, routine, conventional
activities]’ previously known to the industry.” Alice, 134 S.Ct. at 2359
(second alteration in original) (quoting Mayo, 132 S.Ct. at 1294). However,
“an inventive concept can be found in the non-conventional and non-generic
arrangement of known, conventional pieces.” Bascom, 827 F.3d at 1350.
Appellant contends the claimed method “provide[s] access to content
... in a non-conventional manner that substantially improves a user
experience.” App. Br. 12. That is, Appellant contends the claims provide
more than “mere processors and memories crunching numbers to ‘establish[]
pricing offers for products,’” rather, the claims “provide real world results in
a non-conventional, non-obvious manner.” Id.
Appellant has not persuaded us of Examiner error. Appellant has not
identified what it is about claim 1 that allegedly amounts to more than a
conventional arrangement of limitations for performing the abstract idea
identified above. Rather, Appellant’s argument for the second step of the
Alice analysis is, in essence, a conclusory assertion that the claims are non-
conventional. Moreover, although the second step of the Alice framework is
described as a search for an “inventive concept,” 134 S. Ct. at 2355, the
analysis is not an evaluation of novelty or non-obviousness. A novel and
non-obvious claim directed to a purely abstract idea is, nonetheless, patent-
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ineligible. See Mayo, 132 S. Ct. at 1304; see also Synopsys, Inc. v. Mentor
Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir. 2016) (“[A] claim for a new
abstract idea is still an abstract idea. The search for a § 101 inventive
concept is thus distinct from demonstrating § 102 novelty.”).
We are, therefore, not persuaded the Examiner erred in rejecting as
patent-ineligible claim 1, and claims 2—9, 11—19, 21—33, 35—43, and 45—55
not specifically argued separately.
Obviousness
The Examiner finds the combination of Walker and Yen discloses all
the limitations of claim 1, including that Yen teaches “upon selection of the
upsell or cross-sell alternative by the user, suspending the first alternative”
and “automatically reinstating the first alternative upon completion of the
upsell or cross-sell alternative.” Final Act. 4—9. Appellant contends Yen
fails to teach these limitations. App. Br. 13—14; Reply Br. 2—A. We agree
with Appellant.
Yen describes providing licenses to a user for current content C and
new content N. Yen, col. 3,11. 26—57. In one example, rights to content C
are granted until a certain time, while rights to content N are granted either
when a particular state condition is satisfied or the rights to content C expire.
Yen, col. 3,11. 45—57. As Appellant argues, Yen’s example provides for
access to content C and then to content N with some overlapping access
possible, but does not provide for the suspension of content C and
subsequent reinstatement of content C following completion of content N.
See Reply Br. 2—A. We thus find the Examiner has failed to show Yen
teaches the “suspending” and “reinstating” limitations of claim 1.
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We are, therefore, constrained by the record to find the Examiner
erred in rejecting as obvious independent claim 1, independent claim 25
which recites commensurate limitations, and dependent claims 2—9, 11—19,
21-24, 26-33, 35^13, and 45-55.
DECISION
We affirm the Examiner’s decision rejecting claims 1—9, 11—19,
21—33, 35—43, and 45-55.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 41.50(f).
AFFIRMED
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