Ex Parte Symons et al

Patent Trial and Appeal Board

Mar 8, 2018

12853913 (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.
12/853,913 08/10/2010 Matthew John Symons D10-052-02281-PR-US 6769
79340 7590 03/12/2018
MANNAVA & KANG, P.C.
3201 Jermantown Road
SUITE 525
FAIRFAX, VA 22030
EXAMINER
LI, SUN M
ART UNIT PAPER NUMBER
3681
NOTIFICATION DATE DELIVERY MODE
03/12/2018 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):
ASHOKM@MANNAVAKANG.COM
docketing @ mannavakang. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MATTHEW JOHN SYMONS and MILTON MERL
Appeal 2016-007518
Application 12/853,9131
Technology Center 3600
Before ST. JOHN COURTENAY III, LARRY J. HUME, and
JAMES W. DEJMEK, Administrative Patent Judges.
DEJMEK, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1—5, 8—12, and 15—19. Appellants have canceled claims 6, 7, 13, 14,
and 20. See Final Act. 2. We have jurisdiction over the remaining pending
claims under 35 U.S.C. § 6(b).
We affirm.
1 Appellants identify Accenture Global Services Limited as the real party in
interest. App. Br. 3.
Appeal 2016-007518
Application 12/853,913
STATEMENT OF THE CASE
Introduction
Appellants’ disclosed and claimed invention relates to “determining
whether to present online bid content information from a prequalified value
chain entity at a virtual point-of-decision on a website.” Spec. 14.
According to the Specification, “bid content” refers to advertisements,
discounts, coupons, etc. for certain products. Spec. 121. Additionally, a
“value chain entity” may be a wholesaler, importer, or product manufacturer
trying to sell their products. Spec. 113. A value chain entity may be
“prequalified” based on various factors including, for example, geographic
location, product types, or product inventory. Spec. 114. Further, a virtual
point-of-decision on a website “is any online environment where a customer
is presented with a set of product options or has selected from a set of
product options, or any situation where there is a chance to influence [the]
customer.” Spec. 112. Thus, a retailer may sell the opportunity to advertise
a product (i.e., present online bid content) at particular pages on their
website (i.e., virtual points-of-decision) to other entities also attempting to
sell their products (i.e., prequalified value chain entities). Spec. H 13—15.
Claim 1 is representative of the subject matter on appeal and is
reproduced below:
1. A system to present online bid content from value chain
entities at a virtual point-of-decision on a web site of a retailer,
comprising:
a processor;
an online customer database storing online customer data;
and
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a product manufacturer database storing prequalified
value chain entity profiles of the value chain entities, wherein the
processor is to:
retrieve online customer data for the customer, the online
customer data including an attribute describing a current location
of the customer in the web site of the retailer;
compare the attribute with predetermined virtual points-
of-decision of the web site to determine whether the current
location of the customer is at a virtual point-of-decision in the
web site; and
in response to a determination that the customer is at a
virtual point-of-decision, the processor is to:
determine a customer segment of the customer based on
the online customer data;
determine a next online action for the retailer that includes
a recommended product type based on the customer segment of
the customer, wherein the next online action includes an online
action, in the website, regarding product recommendations at the
virtual point-of-decision to increase customer lifetime value;
wherein to determine the next online action, the processor
is to:
match product data stored in value chain entity profiles for
the value chain entities with the recommended product type
included in the next online action;
determine prequalified value chain entities from the value
chain entities based upon the matched product data and the
recommended product type, wherein the prequalified value chain
entities are other than the retailer;
determine bid content submitted by the retailer and by the
prequalified value chain entities to present to the customer at the
virtual point-of-decision, wherein the bid content includes an
advertisement for the recommended product type;
determine absolute ad yield for each determined bid
content, wherein the absolute ad yield is a measure of profits for
the retailer; and
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Application 12/853,913
insert, in response to a determination that the absolute ad
yield for the advertisement submitted by the prequalified value
chain entity is greater than the absolute ad yield for the
advertisement submitted by the retailer, the bid content
submitted by the prequalified value chain entity at the virtual
point-of-decision.
The Examiner’s Rejection
Claims 1—5, 8—12, and 15—19 stand rejected under 35 U.S.C. § 101 as
being directed to judicially excepted subject matter. Final Act. 9—12.
Issue on Appeal
Did the Examiner err in concluding Appellants’ claimed invention is
directed to an abstract idea and the recited claim limitations do not provide
meaningful limitations to transform the abstract idea into patent-eligible
subject matter?
ANALYSIS2
Appellants dispute the Examiner’s conclusion that the pending claims
are directed to patent-ineligible subject matter under 35 U.S.C. § 101. App.
Br. 10-28; Reply Br. 3—13. In particular, Appellants argue the Examiner’s
characterization of the claims as being directed to the concept of modifying
a trigger marketing event based on online behavior is (i) dissimilar from the
2 Throughout this Decision, we have considered the Appeal Brief, filed
January 28, 2016 (“App. Br.”); the Reply Brief, filed August 1, 2016
(“Reply Br.”); the Examiner’s Answer, mailed June 13, 2016 (“Ans.”); and
the Final Office Action, mailed September 3, 2015 (“Final Act.”), from
which this Appeal is taken.
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Application 12/853,913
abstract ideas in Cyberfone, Smart Gene, and Digit ech;3 and (ii) fails to
consider the claims as a whole. App. Br. 13—21; Reply Br. 4—8. Further,
Appellants assert the claims are directed to significantly more than the
alleged abstract idea because the claims are necessarily rooted in computer
technology and recite other than what is well-understood, routine, and
conventional in the field. App. Br. 21—24; Reply Br. 8—11. For the reasons
discussed infra, Appellants have not persuaded us of error.
The Supreme Court’s two-step framework guides our analysis. Alice
Corp. Pty. Ltd. v. CLS Bank Inti, 134 S. Ct. 2347, 2355 (2014). If a claim
falls within one of the statutory categories of patent eligibility (i.e., a
process, machine, manufacture or composition of matter) then the first
inquiry is whether the claim is directed to one of the judicially recognized
exceptions (i.e., a law of nature, a natural phenomenon, or an abstract idea).
Alice, 134 S. Ct. at 2355. If so, the second step is to determine whether any
element, or combination of elements, amounts to significantly more than the
judicial exception. Alice, 134 S. Ct. at 2355.
Although the independent claims each broadly fall within the statutory
categories of patentability, the Examiner concludes the claims are directed to
a judicially recognized exception—i.e., an abstract idea. Final Act. 9-10. In
particular, the Examiner concludes the claims are directed to the abstract
idea of “presenting an online bid content (i.e. [sic] advertisement, coupon,
incentive, offer) with highest ad yield to someone in an online environment,”
3 SmartGene, Inc. v. Advanced Biological Labs., SA, 555 F. App’x 950 (Fed.
Cir. 2014); Cyberfone Sys. v. CNN Interactive Grp., 558 F. App’x 988 (Fed.
Cir. 2014); and Digitech Image Tech., LLC v. Elecs. For Imaging, Inc., 758
F.3d 1344 (Fed. Cir. 2014), respectively.
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which the Examiner concludes is a series of organizing human activities and
mathematical relationships. Final Act. 9—10.
Instead of using a definition of an abstract idea, “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 (Isr.) Ltd. v. Openet Telecom, Inc.,
841 F.3d 1288, 1294 (Fed. Cir. 2016) (citing Elec. Power Grp., LLC v.
Alstom S.A., 830 F.3d 1350, 1353—54 (Fed. Cir. 2016)); accord United
States Patent and Trademark Office, July 2015 Update: Subject Matter
Eligibility 3 (July 30, 2015), https://www.uspto.gov/sites/default/files/
documents/ieg-july-2015-update.pdf (instructing Examiners that “a claimed
concept is not identified as an abstract idea unless it is similar to at least one
concept that the courts have identified as an abstract idea.”). As part of this
inquiry, we must “look at the ‘focus of the claimed advance over the prior
art’ to determine if the claim’s ‘character as a whole’ is directed to excluded
subject matter.” Affinity Labs of Tex., LLC v. DirecTV, LLC, 838 F.3d 1253,
1257 (Fed. Cir. 2016).
Here, Appellants’ claims generally relate to determining whether to
present (i.e., insert) online bid content (e.g., advertisements) to a consumer
in an online environment by a retailer. See, e.g., claim 1. In the claimed
system (and commensurately recited method and computer readable
medium), data related to customers and product manufacturers (i.e., value
chain entities) are stored, retrieved, and analyzed, inter alia, to determine or
identify (i) a customer segment to which the customer belongs; (ii) where
the customer is located within the web site; (iii) a recommended product;
and (iv) bid content associated with the recommended product and value
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chain entity. Additionally, the selection of the bid content to be presented to
the user is further based on a calculation of profits (i.e., absolute ad yield) to
the retailer.
Our reviewing court 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
LLCv. Wells Fargo Bank, N.A., 776 F.3d 1343, 1347 (Fed. Cir. 2014).
Additionally, the collection of information and analysis of information (e.g.,
recognizing certain data within the dataset) are also abstract ideas. Elec.
Power, 830 F.3d at 1353. Similarly, “collecting, displaying, and
manipulating data” is an abstract idea. Intellectual Ventures I LLCv.
Capital One Fin. Corp., 850 F.3d 1332, 1340 (Fed. Cir. 2017). Further, a
process that employs mathematical algorithms to manipulate existing
information to generate additional information is abstract. Digitech Image
Techs., LLCv. Elec, for Imaging, Inc., 758 F.3d 1344, 1351 (Fed. Cir.
2014). Also, more recently, our reviewing court has also concluded that acts
of parsing, comparing, storing, and editing data are abstract ideas.
Berkeimer v. HP Inc., No. 2017-1437, 2018 WL 774096, at *5 (Fed. Cir.
2018).
Further, merely combining several abstract ideas does not render the
combination any less abstract. RecogniCorp, LLC v. Nintendo Co., 855 F.3d
1322, 1327 (Fed. Cir. 2017) (“Adding one abstract idea (math) to another
abstract idea . . . does not render the claim non-abstract.”); see also
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093—94 (Fed. Cir.
2016) (determining the pending claims were directed to a combination of
abstract ideas).
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As an initial matter, we note in attempting to distinguish the pending
claims from other ideas that had been concluded to be abstract or represent a
fundamental economic practice, Appellants identify various limitations not
present in the claims. See, e.g., Reply Br. 8. Nonetheless, we agree with the
Examiner that as a whole, the claims are directed to presenting online bid
content with the highest ad yield (i.e., measure of profits, see Spec. 129) to a
consumer in an online environment, which is a combination of methods for
organizing human activities as well as the application of mathematical
relationships. Final Act. 9—10; see also Ans. 6 (“the instant claims are also
directed to [an] abstract idea of basic and fundamental economic practices as
they merely reflect a business practice where targeted
advertisement/offer/coupon, based on the calculated highest profits
generated from the ad, are generated/selected and implemented”).
In particular, storing and retrieving data (e.g., customer data or value
chain entity profiles), analyzing and recognizing certain data (e.g.,
determining a customer’s virtual location, determining a particular segment
of data, or matching product data), and providing a recommended product
are similar to ideas previously concluded by our reviewing court to be
abstract. See e.g., Content Extraction, 776 F.3d at 1347, Elec. Power, 830
F.3d at 1353, Intellectual Ventures, 850 F.3d at 1340; see also Intellectual
Ventures, 850 F.3d at 1340 (concluding “customizing information and
presenting it to users based on particular characteristics” to be abstract);
Smart Sys. Innovations, LLC v. Chicago Transit Authority, No. 2016-1233,
2017 WF 4654964, at *6 (Fed. Cir. Oct. 18, 2017) (concluding the
collection, storage, and recognition of data are abstract ideas); Netflix, Inc. v.
Rovi Corp., 114 F.Supp.3d 927, 944 (N.D. Cal. 2015), affd, 670 F. App’x
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704 (Fed. Cir. 2016) (concluding making recommendations of programs
based on past viewing history is an abstract idea). Further, the determination
of absolute ad yield and comparison of ad yields is a fundamental economic
practice and achieved by performing a series of mathematical relationships.
See Alice, 134 S. Ct. at 2356 (citing Bilski v. Kappos, 561 U.S. 593, 611
(2010)); see also Digitech, 758 F.3d at 1351, RecogniCorp, 855 F.3d at
1327.
Because we determine the claims are directed to an abstract idea, we
analyze the claims under step two of Alice 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 2355 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc.,
132 S. Ct. 1289, 1294, 1297—98 (2012)). The implementation of the abstract
idea involved must be “more than [the] performance of ‘well-understood,
routine, [and] conventional activities previously known to the industry.’”
Content Extraction, 776 F.3d at 1347-48 (quoting Alice, 134 S. Ct. at 2359)
(alteration in original).
Despite characterizing the claimed invention as using computer
technology to overcome a problem specific to computer networks and
addressing a business challenge particular to the Internet, Appellants do not
present sufficient persuasive evidence or argument that the claims are
directed to an improvement specific to a computer network or the Internet
itself (q.g., improving the network’s operation or configuration, or retaining
website visitors). See App. Br. 21—24; Reply Br. 9—11.4 Rather, the focus of
4 Additionally, Appellants’ characterizations of the claims as “minimizing
the modifications to a website” and solving the “problem of updating
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the claims is on whether to present online bid content with the highest ad
yield to a consumer in an online environment using a computer and the
Internet as tools, not on an improvement in a computer or the Internet as a
tool. Compare, e.g., Elec. Power, 830 F.3d at 1354, with DDR Holdings,
LLCv. Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014).
“[TJargeted advertising is [a well-known] concept, insofar as
matching consumers with a given product or service ‘has been practiced as
long as markets have been in operation.’” Mors a v. Facebook, Inc., 77 F.
Supp. 3d 1007, 1013 (C.D. Cal. 2014), affd, 622 F. App’x 915 (Fed. Cir.
2015) (quoting Tuxis Techs., LLC v. Amazon.com, Inc., No. CV 13-1771 -
RGA, 2014 WL 4382446, at *5 (D. Del. Sept. 3, 2014)). In other words,
“[t]he concept of gathering information about one’s intended market and
attempting to customize the information then provided is as old as the
saying, ‘know your audience.’” Morsa, 77 F. Supp. 3d at 1013 (quoting
OpenTV, Inc. v. Netflixlnc., 76 F. Supp. 3d 886, 893 (N.D. Cal. 2014)).
Further, we disagree with Appellants that the claims add a specific
limitation that was not well-understood, routine, or conventional. See App.
Br. 24—25; Reply Br. 10—11. Rather, we agree with the Examiner that the
claims recite generic computer components (e.g., a processor, a display, a
graphical user interface) and perform basic computer functions. Ans. 7—9;
see also BuySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir.
2014) (“a computer [that] receives and sends information over a network . . .
is not even arguably inventive”), Ultramercial, Inc. v. Hulu, LLC, 772 F.3d
709, 714—15 (Fed. Cir. 2014). We also note that, in the Specification
website content” are misplaced and unpersuasive. See App. Br. 21—22;
Reply Br. 10.
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Appellants describe the computer in generic terms as comprising one or
more I/O devices memory, and a network interface. Spec. 144.
Additionally, Appellants state “that other known electronic components may
be added or substituted” to the computer system. Spec. 144. In other
words, the Specification describes the use of generic computing components
and functionality and is not limited to specific computing components or the
performance of specific computing functions. Accordingly, we do not find
that the claims recite “significantly more” to transform the abstract idea into
a patent-eligible application.
Further, to the extent Appellants are asserting a lack of rejection under
Sections 102 and/or 103, suggests the instant claims do not recite well
understood, routine, or conventional activities (see App. Br. 24—25), we are
not persuaded. Subject-matter eligibility under 35 U.S.C. § 101 is a
requirement separate from other patentability inquiries. See Mayo, 566 U.S.
66, 90 (2012) (recognizing that the § 101 inquiry and other patentability
inquiries “might sometimes overlap,” but that “shift[ing] the patent-
eligibility inquiry entirely to these [other] sections risks creating
significantly greater legal uncertainty, while assuming that those sections
can do work that they are not equipped to do”); see also Diamond v. Diehr,
450 U.S. 175, 188—89 (1981) (“[t]he ‘novelty’ of any element or steps in a
process, or even of the process itself, is of no relevance in determining
whether the subject matter of a claim falls within the § 101 categories of
possibly patentable subject matter”); Two-Way Media Ltd. v. Comcast Cable
Commc’ns, LLC, 874 F.3d 1329, 1340 (Fed. Cir. 2017) (“[eligibility and
novelty are separate inquiries”).
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Appellants also argue “the recited features act to narrow, confine, and
otherwise tie down the claim so as not to preempt the entire field of
inserting/presenting a profitable targeted/recommended advertisement/
coupon/offer to a customer on a web site.” App. Br. 26—28; see also Reply
Br. 11-13.
“While preemption may signal patent ineligible subject matter, the
absence of complete preemption does not demonstrate patent eligibility.”
FairWarning IP, 839 F.3d at 1098 (quoting Ariosa Diagnostics, Inc. v.
Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015); see also OIP Techs.,
Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362—63 (Fed. Cir. 2015) (“[T]hat
the claims do not preempt all price optimization or may be limited to price
optimization in the e-commerce setting do not make them any less
abstract.”). Further, “[wjhere a patent’s claims are deemed only to disclose
patent ineligible subject matter under the Mayo framework, as they are in
this case, preemption concerns are fully addressed and made moot.” Ariosa,
788 F.3d at 1379.
For the reasons discussed supra, we are not persuaded of Examiner
error. Accordingly, we sustain the Examiner’s rejection of independent
claim 1. For similar reasons, we also sustain the Examiner’s rejection of
independent claims 8 and 15, which recite similar limitations were not
argued separately. See App. Br. 28. Additionally, we sustain the
Examiner’s rejection of claims 2—5, 9-12, and 16—19, which depend
therefrom and were not argued separately. See App. Br. 28; 37 C.F.R.
§41.37(c)(l)(iv)(2015).
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DECISION
We affirm the Examiner’s decision rejecting claims 1—5, 8—12, and
15-19 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). See
37 C.F.R. §41.50(f).
AFFIRMED
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