Ex Parte Swanson

Patent Trial and Appeal Board

Oct 22, 2018

12567029 (P.T.A.B. Oct. 22, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/567,029 09/25/2009
7590
Daniel R. Swanson, Sr.
16325 Dragonnade Trail
Midlothian, VA 23113
10/22/2018
FIRST NAMED INVENTOR
Daniel R. Swanson SR.
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.
2938.002US 1 3509
EXAMINER
BUSCH, CHRISTOPHER CONRAD
ART UNIT PAPER NUMBER
3681
MAIL DATE DELIVERY MODE
10/22/2018 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 DANIEL R. SW ANSON
Appeal2017-007326
Application 12/567 ,029
Technology Center 3600
Before ST. JOHN COURTENAY III, LARRY J. HUME, and
JOYCE CRAIG, Administrative Patent Judges.
COURTENAY, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from a Final rejection of
claims 7-12, 28, and 31-36. Claims 1---6, 13-27, 29, and 30 are cancelled.
We have jurisdiction over the pending claims under 35 U.S.C. § 6(b ).
We Affirm.
STATEMENT OF THE CASE
Introduction
Appellant's invention generally relates to "self-directed individual
customer segmentation and customer rewards." Title.
1 According to Appellant, the real party in interest is the inventor, Daniel R.
Swanson. App. Br. 7.
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Application 12/567,029
Exemplary Claim
7. A computer executed method comprising:
gathering a plurality of responses comprising personality preference
responses of at least one individual to predefined personality determination
questions, an aspirational goal of the at least one individual, and at least one
preference or rating for an individual product or service from the at least one
individual using a computer with at least one processor and a network
connection;
comparing and matching, using the computer, the plurality of
responses of the at least one individual to a first segment of multiple
unknown persons of a plurality of segments of multiple unknown persons
who share similar responses, wherein the first segment includes multiple
preference responses from the multiple unknown persons, wherein the
multiple unknown persons are unknown to the at least one individual;
presenting, using the computer, to the at least one individual a
plurality of system-defined user-selectable segments, each of the segments
including a corresponding presented percentage match of unknown persons
in each of the plurality of system-defined user-selectable segments that share
a similar preference or rating for the individual product or service and have
similar personality preference responses as the at least one individual
wherein each segment represents multiple preference responses by multiple
unknown persons, wherein the multiple unknown persons' individual
identities and system identities are hidden from the at least one individual;
gathering, using the computer, from the at least one individual at least
one selection of a system-defined user-selectable segment from the plurality
of system-defined user-selectable segments;
identifying, using the computer, at least one product or at least one
service-available for purchase by the at least one individual based on the
selection of the system-defined user-selectable segment;
offering, using the computer, to the at least one individual the at least
one product or the at least one service for purchase, in response to
identifying the at least one product; and
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automatically providing a discount, reward, or incentive for the at
least one product or the at least one service as a function of the at least one
selection of the system-defined user-selectable segment and the plurality of
gathered responses of the at least one individual including the aspirational
goal of the at least one individual, via at least one output apparatus
communicatively coupled to the computer.
( contested limitation emphasized).
App. Br. 240-241. (Claims Appendix) ( emphasis added).
Rejections
A. Claim 33 is rejected under 35 U.S.C. § 112, first paragraph, as failing
to comply with the written description requirement. Final Act. 2.
B. Claim 33 is rejected under 35 U.S.C. § 112, second paragraph, as
being indefinite for failing to particularly point out and distinctly
claim the subject matter of the invention. Final Act. 3.
C. Claims 7-12, 28, and 31-36 are rejected under 35 U.S.C. § 101, as
being directed to a judicial exception, without significantly more.
Final Act. 4.
D. Claims 7-10, 31, and 36 are rejected under 35 U.S.C. § I03(a), as
obvious over the combined teachings and suggestions of Monteforte
et al. (US 2010/0262449 Al; published Oct. 14, 2010)
("Monteforte"), Buchanan et al. (US 2011/0107265 A 1; published
May 5, 2011) ("Buchanan"), and Andra et al. (US 2009/0319436 Al;
published Dec. 24, 2009) ("Andra"). Final Act. 6. 2
E. Claim 11 is rejected under 35 U.S.C. § I03(a), as obvious over the
combined teachings and suggestions of Monteforte, Buchanan, Andra,
2 We include claim 36 under rejection D, as rejected by the Examiner on
page 11 of the Final Action, but inadvertently omitted from the heading of
rejection D, as presented on page 6 of the Final Action.
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and Silverbrook et al. (US 2008/0091532 Al; published April 17,
2008) ("Silverbrook"). Final Act. 11.
F. Claim 12 is rejected under 35 U.S.C. § I03(a), as obvious over the
combined teachings and suggestions of Monteforte, Buchanan, Andra,
and Guo et al. (US 2009/0006188 Al; published Jan. 1, 2009)
("Guo"). Final Act. 12.
G. Claim 28 is rejected under 35 U.S.C. § I03(a), as obvious over the
combined teachings and suggestions of Monteforte, Buchanan, Andra,
Sholtis et al. (US 8,041,580 Bl; iss. Oct.18, 2011) ("Sholtis") and Sue
(US 2009/0006465 Al; published Jan. 1, 2009). Final Act. 13.
H. Claims 32-34 are rejected under 35 U.S.C. § I03(a), as obvious over
the combined teachings and suggestions of Monteforte, Buchanan,
Andra, Payne et al. (US 5,715,314; iss. Feb. 3, 1998) ("Payne") and
Sheehan (US 2007/0011099 Al; published Jan. 11, 2007). Final Act.
15.
I. Claim 35 is rejected under 35 U.S.C. § I03(a), as obvious over the
combined teachings and suggestions of Monteforte, Buchanan, Andra,
Payne and Kirkpatrick et al. (US 2001/0042022 Al; published Nov.
15, 2001) ("Kirkpatrick"). Final Act. 19.
Rejection A of Claim 33 under 35 US.C. § 112,first paragraph
Issue: Under § 112, first paragraph, did the Examiner err in finding
that claim 33 fails to comply with the written description requirement?
The Examiner finds the Specification fails to define the claim terms
"specialized payment network" that includes a "dedicated individual
segmentation system payment network." The Examiner finds these claim
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terms are not supported by Appellant's original Specification. Final
Act. 2-3.
Appellant contends the Specification reasonably conveys possession
of the claimed invention. App. Br. 103, citing Spec. i-flOO and Fig. 14.
Appellant further urges that the "Point of Sale" System (Spec. ,r 54) conveys
possession of the claimed term "specialized payment network" that includes
a "dedicated individual segmentation system payment network" as recited in
claim 33. App. Br. 105-106.
Our reviewing court guides the written description "must clearly
allow persons of ordinary skill in the art to recognize that [the inventor]
invented what is claimed." Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d
1336, 1351 (Fed. Cir. 2010) (en bane) (citation and quotations omitted).
The test is whether the disclosure "conveys to those skilled in the art that the
inventor had possession of the claimed subject matter as of the filing date."
Id. "[A]ctual 'possession' or reduction to practice outside of the
specification is not enough. Rather ... it is the specification itself that must
demonstrate possession." Id. at 1352; see also PowerOasis, Inc. v. T-Mobile
USA, Inc., 522 F.3d 1299, 1306--07 (Fed. Cir. 2008) (emphasis added)
( explaining that § 112, ,r 1 "requires that the written description actually or
inherently disclose the claim element").
We find Appellant's "Point of Sale" System, as described in the
Specification (i-f 54 ), shows that Appellant had possession of a "specialized
payment network" that includes a "dedicated individual segmentation
system payment network," at the time the application was filed.
Furthermore, we find the described "Individual Segmentation System,"
which updates individual and segment records, shows possession of the
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disputed claim terms. Spec. ,r 100. Therefore, we are constrained on this
record to reverse the Examiner's rejection A of claim 33, under 35 U.S.C.
§ 112, first paragraph, for lack of written description.
Rejection B of Claim 33 under 35 USC§ 112, second paragraph.
Issue: Under§ 112, second paragraph, did the Examiner err in
concluding that claim 33 is indefinite?
The Examiner concludes claim 33 fails to "specify how or why the
network is specialized." The Examiner also finds such network is "nothing
more than the [I]ntemet." Final Act. 3.
35 U.S.C. § 112, second paragraph, requires: "The specification shall
conclude with one or more claims particularly pointing out and distinctly
claiming the subject matter which the applicant regards as his invention."
As guided by the Manual of Patent Examining Procedure (MPEP), a
rejection based on the failure to claim the subject matter which the applicant
regards as the invention "is appropriate only where an inventor has stated,
somewhere other than in the application as filed, that the invention is
something different from what is defined by the claims." MPEP § 2172(!).
"Agreement, or lack thereof, between the claims and the specification is
properly considered only with respect to the first paragraph of 112; it is
irrelevant to compliance with the second paragraph of that section." In re
Ehrreich, 590 F.2d 902, 906 (CCPA 1979).
We conclude the Examiner's interpretation of the subject claim relates
to the breadth of the claim. However, see, e.g., In re Miller, 441 F.2d 689,
693 (CCPA 1971) ("Breadth is not ... indefiniteness.").
Accordingly, we reverse the Examiner's rejection B of claim 33 under
35 U.S.C. § 112, second paragraph.
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Rejection C of Claims 7-12, 28, and 31-36 under 35 US.C. § 101
Issue: Did the Examiner err in rejecting claims 7-12, 28, and 31-36
under 35 U.S.C. § 101, as being directed to a judicial exception, without
significantly more?
We have considered all of Appellant's arguments and any evidence
presented. We highlight and address specific findings and arguments for
emphasis in our analysis below.
Mayo/Alice Analysis
Under 35 U.S.C. § 101, a patent may be obtained for "any new and
useful process, machine, manufacture, or composition of matter, or any new
and useful improvement thereof." The Supreme Court has "long held that
this provision contains an important implicit exception: Laws of nature,
natural phenomena, and abstract ideas are not patentable." Alice Corp. Pty.
Ltd. v. CLS Bankint'l, 134 S. Ct. 2347, 2354 (2014) (quotingAss'nfor
Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)).
The Supreme Court in Alice reiterated the two-step framework previously
set forth in Mayo Collaborative Services v. Prometheus Laboratories, Inc.,
566 U.S. 66, 82-84 (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, 134 S. Ct. at 2355.
The first step in that analysis is to determine whether the claims at
issue are directed to one of those patent-ineligible concepts, such as an
abstract idea. Abstract ideas may 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.
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If the "acts" of a claimed process manipulate only numbers, abstract
concepts or ideas, or signals representing any of the foregoing, the acts are
not being applied to appropriate subject matter. See Gottschalk v. Benson,
409 U.S. 63, 71-72 (1972). "'Phenomena of nature, thoughjust discovered,
mental processes, and abstract intellectual concepts are not patentable, as
they are the basic tools of scientific and technological work."' In re
Ferguson, 558 F.3d 1359, 1363 (Fed. Cir. 2009) (quoting Benson, 409 U.S.
at 67). Moreover, if a method can be performed by human thought alone, or
by a human using pen and paper, it is merely an abstract idea and is not
patent eligible under § 101. CyberSource Corp. v. Retail Decisions, Inc.,
654 F.3d 1366, 1372-73 (Fed. Cir. 2011).
If the claims are not directed to a patent-ineligible concept, the inquiry
ends. See Visual Memory LLC v. NVIDIA Corp., 867 F.3d 1253, 1262 (Fed.
Cir. 2017).
Otherwise, the inquiry proceeds to the second step in which the
elements of the claims are considered "individually and 'as an ordered
combination' to determine whether the additional elements 'transform the
nature of the claim' into a patent-eligible application." Alice, 134 S. Ct. at
2355 (quoting Mayo, 566 U.S. at 79, 78). We consider the question of
whether the claims are directed to a specific improvement in the capabilities
of the computing devices, or, instead, "a process that qualifies as an 'abstract
idea' for which computers are invoked merely as a tool." Enfzsh, LLC v.
Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016).
We, therefore, decide under step two, whether the claims: (a) set forth
an inventive concept that provides a specific means or method that improves
the relevant technology, or (b) are directed to a result or effect that itself is
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the abstract idea, in which the claims merely invoke generic processes and
machinery. See Enfzsh, 822 F.3d at 1336.
The Examiner's Rejection C under 35 US.C. § 101
Regarding the first step of the Alice/Mayo analysis, the Examiner
concludes that claims 7-12, 28, and 31-36, which are directed to the concept
of sending targeted ads (i.e., offers) to users based on their preferences and
personality traits, are directed to a judicial exception, i.e., an abstract idea,
because the claims are directed to a "fundamental economic practice." Final
Act. 4. 3
Regarding the second step of the Mayo/Alice analysis, the Examiner
concludes the claims do not include additional elements that amount to
significantly more than the judicial exception, because:
[T]the claims fail to effect an improvement to another
technology or technical field, do not amount to an improvement
to the functioning of the computer itself, and do not move
beyond a general link of the use of an abstract idea to a
particular technological environment.
The claims merely amount to the application or
instructions to apply the abstract idea (i.e. sending targeted ads
to users based on their preferences and personality traits) on a
computer, and is considered to amount to nothing more than
requiring a generic computer system ( e.g. a computer system
comprising generic elements, such as a memory and a
processor, for receiving data entries corresponding to user
activity, matching the data entry with segments of users with
similar traits, enabling the user to choose a segment that they
like, and presenting the ad to the user based on the probabilistic
match) to merely carry out the abstract idea itself. As such, the
3 "Patent eligibility under§ 101 presents an issue of law." Accenture Glob.
Servs., GmbH v. Guidewire Software, Inc., 728 F.3d 1336, 1340-41 (Fed.
Cir. 2013).
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claims, when considered as a whole, are nothing more than the
instruction to implement the abstract idea (i.e. sending targeted
ads to users based on their preferences and personality traits) in
a particular, albeit well-understood, routine and conventional
technological environment.
Final Act. 5---6. 4
For the aforementioned reasons, the Examiner concludes that all
claims 7-12, 28, and 31-36 on appeal are not patent eligible under 35 U.S.C.
§ 101.
Mayo/Alice Analysis - Step 1
Regarding Alice Step 1, Appellant contends:
This claim is not directed to a law of nature, natural
phenomena, or an abstract idea, because, as described in more
detail below, this claim is not directed to the subject matter of
any of the only three types of claims that the Court has
positively identified as being within the implicit exception to
subject matter eligibility: (1) an idea or algorithm of itself, (2) a
mathematical formula, or a (3) a fundamental economic
practice.
App. Br. 126-128.
In response, the Examiner explains the basis for the rejection:
The invention is nothing more than a means for sending
targeted ads to users based on their preferences and personality
traits, which includes the steps of: gathering user responses,
comparing those responses with segments of users who share
4 The patent-eligibility inquiry may contain underlying issues of fact.
Mortg. Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1325
(Fed. Cir. 2016). In particular, "[t]he question of whether a claim element or
combination of elements is well-understood, routine and conventional to a
skilled artisan in the relevant field is a question of fact." Berkheimer v. HP
Inc., 881 F.3d 1360, 1368 (Fed. Cir. 2018).
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similar responses, enabling the user to select a segment of their
choosing, noting user's selection, providing a targeted ad for a
product or service to the user based on their selection, and
enabling the user to purchase the advertised product or service.
Ans. 5---6.
The Examiner additionally explains:
Federal Circuit has held that "customizing information based on
... information known about the user" is an abstract idea.
Intellectual Ventures I LLC v. Capital One Bank (USA), 792
F.3d 1363, 1369 (Fed. Cir. 2015). The court in the Intellectual
Ventures I case explained that tailoring of content based on
information about the user-such as where the user lives or
what time of day the user views the content-is an abstract idea
that is as old as providing different newspaper inserts for
different neighborhoods. Id.
Accordingly, the Federal Circuit has treated collecting
information, including when limited to particular content
(which does not change its character as information), as within
the realm of abstract ideas. See, e.g., Internet Patents, 790 F.3d
at 1349; OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359,
1363 (Fed. Cir. 2015) Content Extraction & Transmission LLC
v. Wells Fargo Bank, Nat'! Ass'n, 776 F.3d 1343, 1347 (Fed.
Cir. 2014); Digitech Image Techs., LLC v. Elecs.for Imaging,
Inc., 758 F.3d 1344, 1351 (Fed. Cir. 2014); CyberSource Corp.
v. Retail Decisions, Inc., 654 F.3d 1366, 1370 (Fed. Cir. 2011 ).
Ans. 7-8, ( emphasis omitted).
The Examiner further explains:
Here, the claims are clearly focused on the combination
of those abstract processes. The advance they purport to make
is a process of gathering and analyzing information of a
specified content, then displaying the results, and not an
inventive technology for performing those functions. They are
therefore directed to an abstract idea.
More particularly, a large portion of the claims is devoted
to enumerating types of information and information sources
available within the user environment.
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Ans. 8-9 ( emphasis omitted).
In determining whether claims are patent-eligible under Section 101,
our reviewing court guides: "the decisional mechanism courts now apply 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 (Israel) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288, 1294 (Fed.
Cir. 2016). The Federal Circuit also guides that "examiners are to continue
to determine if the claim recites (i.e., sets forth or describes) a concept that is
similar to concepts previously found abstract by the courts." Id. at 1294 n.2.
Data gathering is a classic example of insignificant extra-solution
activity. See, e.g., In re Bilski, 545 F.3d 943, 963 (Fed. Cir. 2008) (en bane),
aff'd sub nom, Bilski v. Kappas, 561 U.S. 593 (2010). The Federal Circuit
has concluded that abstract ideas include the concepts of collecting data,
recognizing certain data within the collected data set, and storing the data in
memory. Content Extraction & Transmission LLC v. Wells Fargo Bank,
N.A., 776 F.3d 1343, 1347 (Fed. Cir. 2014); see also Smart Sys. Innovations,
LLC v. Chicago Transit Auth., 873 F.3d 1364, 1372 (Fed. Cir. 2017)
( concluding "claims directed to the collection, storage, and recognition of
data are directed to an abstract idea"); Elec. Power Grp., LLC v. Alstom S.A.,
830 F.3d 1350, 1353 (Fed. Cir. 2016) (the collection of information and
analysis of information are abstract ideas).
Additionally, the collection of information and analysis of information
( e.g., gathering, comparing and matching responses) are also abstract ideas.
Elec. Power, 830 F.3d at 1353. Similarly, "collecting, displaying, and
manipulating data" is an abstract idea. Intellectual Ventures I LLC v.
Capital One Fin. Corp., 850 F.3d 1332, 1340 (Fed. Cir. 2017); see also
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Am., Inc. v. InvestPic, LLC, 890 F.3d 1016, 1021 (Fed. Cir. 2018) ("merely
presenting the results of abstract processes of collecting and analyzing
information ... is abstract as an ancillary part of such collection and
analysis") ( quotations omitted).
Moreover, our reviewing court recently has concluded that acts of
parsing, comparing, storing, and editing data are abstract ideas. Berkheimer
v. HP Inc., 881 F.3d 1360, 1366 (Fed. Cir. 2018). "[M]erely selecting
information, by content or source, for collection [and] analysis ... does
nothing significant to differentiate a process from ordinary mental processes
.... " Elec. Power Grp., 830 F.3d at 1355. Data gathering, such as
receiving and analyzing (or identifying data), by itself, does not transform an
otherwise-abstract process or system of information collection and analysis.
See id.
Therefore, on this record, we conclude Appellant's claims 7-12, 28,
and 31-36 are directed to an abstract idea of a fundamental economic
activity, which is similar to the abstract ideas identified by our reviewing
courts, as discussed above.
Mayo/Alice Analysis-Step 2
Because we conclude the claims on appeal are directed to an abstract
idea for essentially the same reasons articulated by the Examiner (Final
Act. 4, Ans. 2-10), we now tum to the second part of the Alice/Mayo
analysis. We analyze the claims to determine if there are additional
limitations that individually, or as an ordered combination, ensure the claims
amount to "significantly more" than the abstract idea. Alice, 134 S. Ct.
at 2357 (internal quotations and citation omitted).
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Regarding Alice Step 2, Appellant argues that the claims amount to
"'significantly more' than an abstract idea." App. Br. 130-165. Although
Appellant's arguments are voluminous, they are mere attorney arguments
that point to no technological improvement. We do not find such arguments
persuasive.
Appellant's sole independent claim 7 is directed to a computer
executed method that performs the steps of the method using generic
computer components: i.e., "a computer with at least one processor and a
network connection." We find the claims on appeal are silent regarding
specific limitations directed to an improved computer system, processor,
memory, network, database, or Internet. Therefore, we find Appellant's
claimed invention does not provide a solution "necessarily rooted in
computer technology in order to overcome a problem specifically arising in
the realm of computer networks," as considered by the court in DDR
Holdings LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014)
( emphasis added).
Further, regarding the use of the recited generic computers, the
Supreme Court held "the mere recitation of a generic computer cannot
transform a patent-ineligible abstract idea into a patent-eligible invention."
Alice, 134 S. Ct. at 2358; see also BASCOM Glob. Internet Servs., Inc. v.
AT&T Mobility LLC, 827 F.3d 1341, 1348 (Fed. Cir. 2016) ("An abstract
idea on 'an Internet computer network' or on a generic computer is still an
abstract idea"). On this record, we are of the view that Appellant's claims
do not operate the recited generic computer components in an
unconventional manner to achieve an improvement in computer
functionality.
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Our reviewing court provides additional guidance: See FairWarning
IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1096 (Fed. Cir. 2016) ("[T]he use
of generic computer elements like a microprocessor or user interface do not
alone transform an otherwise abstract idea into patent-eligible subject
matter."); OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed.
Cir. 2015) ( claims reciting, inter alia, sending messages over a network,
gathering statistics, using a computerized system to automatically determine
an estimated outcome, and presenting offers to potential customers found to
merely recite "'well-understood, routine conventional activities'" by either
requiring conventional computer activities or routine data-gathering steps)
(internal citation omitted); see also Elec. Power Grp., 830 F.3d at 1355
("We have repeatedly held that such invocations of computers and networks
that are not even arguably inventive are 'insufficient to pass the test of an
inventive concept in the application' of an abstract idea" ( quoting buySAFE,
Inc. v. Google, Inc., 765 F.3d 1350, 1353, 1355 (Fed. Cir. 2014)));
Intellectual Ventures I LLC v. Capital One Financial Corp., 850 F.3d 1332,
1341 (Fed. Cir. 2017) ("Rather, the claims recite both a generic computer
element-a processor-and a series of generic computer 'components' that
merely restate their individual functions .... That is to say, they merely
describe the functions of the abstract idea itself, without particularity. This
is simply not enough under step two").
The Supreme Court additionally guides that the "prohibition against
patenting abstract ideas 'cannot be circumvented by attempting to limit the
use of the formula to a particular technological environment' or [by] adding
'insignificant postsolution activity."' Bilski, 561 U.S. at 610-11 (quoting
Diehr, 450 U.S. at 191-92).
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Because we find Appellant has not established that claims 7-12, 28,
and 31-36 are directed to an improvement in the recited generic computer
and network, we conclude that none of the claim limitations, viewed both
individually and as an ordered combination, amount to significantly more
than the judicial exception in order to sufficiently transform the nature of the
claims into patent-eligible subject matter.
In light of the foregoing, we conclude, under the Mayo/Alice analysis,
that each of Appellant's claims 7-12, 28, and 31-36, considered as a whole,
is directed to a patent-ineligible abstract idea (under step one), and under
step two, does not recite something significantly more to transform the
nature of the claim into a patent-eligible application.
Accordingly, for the reasons discussed above, we sustain the
Examiner's rejection C under 35 U.S.C. § 101, of claims 7-12, 28, and 31-
36, as being directed to a judicial exception, without significantly more. 5
Rejection D of Claims 7-10, 31, and 36 under 35 USC§ 103(a)
Appellant contends Andra does not teach or suggest the "comparing
limitation" as recited in independent claim 7:
comparing and matching, using the computer, the plurality of
responses of the at least one individual to a first segment of
multiple unknown persons of a plurality of segments of multiple
unknown persons who share similar responses, wherein the first
segment includes multiple preference responses from the
multiple unknown persons, wherein the multiple unknown
persons are unknown to the at least one individual.
5 To the extent Appellant has not advanced separate, substantive arguments
for particular claims, or other issues, such arguments are waived. See
37 C.F.R. § 4I.37(c)(l)(iv).
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App. Br. 180.
The Examiner finds Andra's described method teaches this disputed
limitation. Ans. 8-9, citing Andra, Figs. 3, 5, 6, ,r,r 73-79, 84--87 and 90.
Appellant, in particular, argues that the claimed user anonymity is not
taught or suggested in the cited sections of Andra. App. Br. 183. Appellant
specifically contends this disputed limitation is not taught or suggested by
Andra because:
Andra matches a user to specific named individuals
based on opinions so that the users can meet and communicate.
The current claims recite "unknown persons" and "wherein the
first segment includes multiple preference responses from the
multiple unknown persons, wherein the multiple unknown
persons are unknown to the at least one individual." Andra
matches named individuals (non-anonymous) to other named
individuals. "The user match field 512 may illustrate 'Jane
Smith, Tom Green, Charles Brown' in the first row, 'Mia White,
Alfred Chang, Joe Gibbs and Charles Brown' in the second row,
'Dan O'Neil, Lisa Hans' in the third row, and 'Derek O'Brain' in
the fourth row." These individuals cannot be said to be
anonymous as claimed and the rejection violates the broadest
reasonable interpretation of the claim language because the
individuals of Andra are clearly not unknown to other
individuals in a segment in which they have chosen to be a part.
App. Br. 184.
We are persuaded by Appellant's arguments because Andra does not
teach or suggest responses of "unknown persons." See claim 7: "wherein the
first segment includes multiple preference responses from the multiple
unknown persons, wherein the multiple unknown persons are unknown to the
at least one individual." (Emphasis added).
Therefore, based upon this record, for essentially the same reasons
argued by Appellant (App. Br. 184), we are persuaded of at least one error in
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Application 12/567,029
the Examiner's reliance on the disclosure of the cited prior art to teach or
suggest the disputed limitations of independent claim 7, such that we find
error in the Examiner's resulting legal conclusion of obviousness.
Therefore, we are constrained on this record to reverse the Examiner's
obviousness rejection D of sole independent claim 7. For the same reason,
we also reverse rejection D of associated dependent claims 8-10, 31, and 36.
Remaining Dependent Claims rejected under Rejections E-1
Regarding the remaining rejected dependent claims on appeal, we also
reverse rejection E of claim 11, rejection F of claim 12, rejection G of claim
28, rejection Hof claims 32-34, and rejection I of claim 35. On this record,
the Examiner has not established that the additionally cited secondary
references overcome or cure the aforementioned deficiencies of the base
combination of Monteforte, Andra, and Buchanan, as relied upon by the
Examiner to reject independent claim 7.
CONCLUSIONS
The Examiner erred in rejecting claim 33 under 35 U.S.C. § 112, first
paragraph (written description).
The Examiner erred in rejecting claim 33 under 35 U.S.C. § 112,
second paragraph, for indefiniteness.
The Examiner did not err in rejecting claims 7-12, 28, and 31-36
under 35 U.S.C. § 101, as being directed to a judicial exception, without
significantly more.
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Appeal2017-007326
Application 12/567,029
The Examiner erred in rejecting claims 7-12, 28, and 31-36 under
35 U.S.C. § 103(a).
DECISION
We reverse the Examiner's decision rejecting claim 33 under
35 U.S.C. § 112, first paragraph (written description).
We reverse the Examiner's decision rejecting claim 33 under
35 U.S.C. § 112, second paragraph.
We affirm the Examiner's decision rejecting claims 7-12, 28, and
31-36 under 35 U.S.C. § 101.
We reverse the Examiner's decision rejecting claims 7-12, 28,
and 31-36 under 35 U.S.C. § 103(a).
Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, the Examiner's decision is affirmed. See
37 C.F.R. § 4I.50(a)(l).
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). See 37
C.F.R. § 41.50(±).
AFFIRMED
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