My World, Inc.Download PDFPatent Trials and Appeals BoardMar 30, 202014707206 - (D) (P.T.A.B. Mar. 30, 2020) Copy Citation 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. 14/707,206 05/08/2015 Kenneth J. Ouimet 2734.0033 8742 84278 7590 03/30/2020 PATENT LAW GROUP: Atkins and Associates P.C. 123 W. Chandler Heights Road, Unit 12535 Chandler, AZ 85248 EXAMINER WHITAKER, JONATHAN J ART UNIT PAPER NUMBER 3622 NOTIFICATION DATE DELIVERY MODE 03/30/2020 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): main@plgaz.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte KENNETH J. OUIMET ____________ Appeal 2019-004956 Application 14/707,206 Technology Center 3600 ____________ Before RICHARD M. LEBOVITZ, MICHAEL A. VALEK, and JAMIE T. WISZ, Administrative Patent Judges. WISZ, Administrative Patent Judge. DECISION ON APPEAL Appeal 2019-004956 Application 14/707,206 2 STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 seeks review of claims 1– 13 and 26–37. We have jurisdiction under 35 U.S.C. § 6(b). For the reasons set forth below, we AFFIRM. CLAIMED SUBJECT MATTER The Specification describes a “method of controlling the commerce system with communication between publishers and intelligent personal agents.” Spec. ¶ 2. According to the Specification, “[i]n the past, manufacturers and retailers have made generic offers to an entire population or group of consumers” and that “[b]y making generic offers readily available to the public, manufacturers and retailers lose profit from sales to consumers that would purchase the product even absent the discount.” Id. ¶ 4. “Manufacturers and retailers need additional ways to get more value out of their limited marketing budgets” and “would like to reduce the gap between the first impression a consumer receives from an ad and the ultimate purchase of the product by the consumer.” Id. ¶ 11. Also, according to the Specification, “[t]he lack of access to comprehensive, reliable, and objective product information essential to providing effective comparative shopping services restricts the consumer’s ability to find the lowest prices, compare product features, and make the best purchase decisions.” Id. ¶ 7. Although “the consumer can visit all retailers offering a particular type of product and record the various prices, product 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as MyWorld, Inc. Appeal Br. 1. Appeal 2019-004956 Application 14/707,206 3 descriptions, and other attributes to make a purchase decision,” this “brute force approach of one person physically traveling to or otherwise researching each retailer for all manufacturer's product information is generally impractical.” Id. ¶ 9. Therefore, according to the Specification, “[a] need exists for optimization of the process of marketing products using a publisher.” Id. ¶ 12. The Specification describes that, in one embodiment, the present invention is a method of controlling a commerce system comprising the steps of providing a shopping agent including an application programming interface (API), using a publisher to receive information from the shopping agent via the API, publishing content based on the information received from the shopping agent, optically scanning a portion of the content using a mobile device, using the mobile device to add a product to a shopping list maintained by the shopping agent in response to the optically scanned portion of the content, and redeeming a personalized offer for the product at a retailer using the mobile device. Id. Claims 1, 7, 26, and 33 are independent claims. Claim 1 is illustrative and is set forth below (annotated with bracketed numbers for reference to the limitations in the claim): 1. A method of controlling communication over an electronic network including a first computing system and a second computing system, comprising: [1] providing a database on the first computing system including a data structure to organize product information preferential to a consumer; [2] providing an electronic consumer agent on the first computing system in electronic communication with the consumer; Appeal 2019-004956 Application 14/707,206 4 [3] providing an electronic publisher on the second computing system, wherein the electronic publisher accesses the product information preferential to the consumer as organized in the data structure on the first computing system and selects a first product from the product information preferential to the consumer to offer to the consumer; [4] publishing advertising content related to the first product, wherein the advertising content including the first product is transmitted to the consumer on a third computing system; [5] indicating an intent to buy the first product via the consumer using the third computing system, wherein the intent to buy is transmitted to the electronic consumer agent on the first computing system; [6] initiating an electronic negotiation by the electronic consumer agent on the first computing system to generate a personalized offer for the consumer for the first product; and [7] providing a shopping list including the first product and the personalized offer to the consumer for presentation on a display screen after the electronic negotiation for the first product. Appeal Br. 51–52 (Claims Appendix). Independent claims 7 and 26 recite methods comprising similar steps, while claim 33 recites a “non-transitory, tangible computer readable medium” with instructions for performing these steps. Id. at 53–58. REJECTIONS The Examiner rejected claims 1–13 and 26–37 under 35 U.S.C. § 101 as being directed to patent-ineligible subject matter. The Examiner rejected claims 1, 2, 7–9, 26–28, and 33–35 under 35 U.S.C. § 102(a) as anticipated by Moss.2 2 Moss et al., US 2005/0159974 A1, published July 21, 2005 (“Moss”). Appeal 2019-004956 Application 14/707,206 5 The Examiner rejected claims 3, 6, 10, 12, 29, and 31 under 35 U.S.C. § 103 as being obvious Moss in view of Sisselman.3 The Examiner rejected claims 4, 5, 11, 13, 30, 32, 36, and 37 under 35 U.S.C. § 103 as being obvious Moss in view of Rose.4 ISSUES AND ANALYSIS Rejection of claims 1–13 and 26–37 under 35 U.S.C. § 101 as being directed to patent-ineligible subject matter I. PRINCIPLES OF LAW A. Section 101 An invention is patent-eligible if it claims a “new and useful process, machine, manufacture, or composition of matter.” 35 U.S.C. § 101. However, the U.S. Supreme Court has long interpreted 35 U.S.C. § 101 to include implicit exceptions: “[l]aws of nature, natural phenomena, and abstract ideas” are not patentable. E.g., Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014). In determining whether a claim falls within an excluded category, we are guided by the Court’s two-part framework, described in Mayo and Alice. Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with that framework, we first determine whether the claim recites an abstract idea. See Alice, 573 U.S. at 219 (“On their face, the claims before us are drawn to the concept of intermediated settlement, i.e., the use of a third party to mitigate settlement 3 Sisselman, US 2014/0158753 A1, published June 12, 2005 (“Sisselman”). 4 Rose et al., US 2012/0123924 A1, published May 17, 2012 (“Rose”). Appeal 2019-004956 Application 14/707,206 6 risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4 in petitioners’ application explain the basic concept of hedging, or protecting against risk.”). Concepts determined to be abstract ideas, and thus patent ineligible, include certain methods of organizing human activity, such as fundamental economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611); mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts that recite abstract idea, but are nonetheless determined to be patent eligible, include physical and chemical processes, such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191 (1981)); “tanning, dyeing, making waterproof cloth, vulcanizing India rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S. 252, 267–68 (1853))); and manufacturing flour (Benson, 409 U.S. at 69 (citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))). If the claim is “directed to” an abstract idea, we turn to the second part of the Alice and Mayo framework, where “we must examine the elements of the claim to determine whether it contains an ‘inventive concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-eligible application.” Alice, 573 U.S. at 221 (quotation marks omitted). “A claim that recites an abstract idea must include ‘additional features’ to ensure ‘that the [claim] is more than a drafting effort designed to monopolize the [abstract idea].’” Id. (alterations in original) (quoting Mayo, 566 U.S. at 77). “[M]erely requir[ing] generic computer implementation[] fail[s] to transform that abstract idea into a patent-eligible invention.” Id. Appeal 2019-004956 Application 14/707,206 7 B. USPTO Section 101 Guidance In January 2019, the U.S. Patent and Trademark Office (USPTO) published revised guidance on the application of § 101. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“2019 Revised Guidance”).5 “All USPTO personnel are, as a matter of internal agency management, expected to follow the guidance.” Id. at 51; see also October 2019 Update at 1. Under the 2019 Revised Guidance and the October 2019 Update, we first look to whether the claim recites: (1) any judicial exceptions, including certain groupings of abstract ideas (i.e., mathematical concepts, certain methods of organizing human activity such as a fundamental economic practice, or mental processes) (“Step 2A, Prong One”); and (2) additional elements that integrate the judicial exception into a practical application (see MPEP § 2106.05(a)–(c), (e)–(h) (9th ed. Rev. 08.2017, Jan. 2018)) (“Step 2A, Prong Two”).6 2019 Revised Guidance, 84 Fed. Reg. at 52–55. 5 The Office issued further guidance on October 17, 2019. USPTO, October 2019 Update: Subject Matter Eligibility (the “October 2019 Update”) (available at https://www.uspto.gov/sites/default/files/documents/peg_oct_2019_update.p df). 6 This evaluation is performed by (a) identifying whether there are any additional elements recited in the claim beyond the judicial exception, and (b) evaluating those additional elements individually and in combination to determine whether the claim as a whole integrates the exception into a practical application. See 2019 Revised Guidance - Section III(A)(2), 84 Fed. Reg. 54–55. Appeal 2019-004956 Application 14/707,206 8 Only if a claim (1) recites a judicial exception and (2) does not integrate that exception into a practical application, do we then look, under Step 2B, to whether the claim: (3) adds a specific limitation beyond the judicial exception that is not “well-understood, routine, conventional” in the field (see MPEP § 2106.05(d)); or (4) simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception (“Step 2B”). 2019 Revised Guidance, 84 Fed. Reg. at 52–56. II. ANALYSIS Applying the Revised Guidance to the facts on this record, we find that claims 1–13 and 26–37 are directed to patent-ineligible subject matter. Claim 1 is directed to a computerized method for marketing products and facilitating an electronic negotiation between a consumer and a retailer. Following the first step of the Mayo/Alice analysis, we find that the claim is directed to a method, and therefore falls into one of the broad statutory categories of patent-eligible subject matter under 35 U.S.C. § 101. We thus proceed to Step 2A, Prong One, of the Eligibility Guidance. A. Guidance Step 2A, Prong 1 The Revised Guidance instructs us first to determine whether any judicial exception to patent eligibility is recited in the claim. The Revised Guidance identifies three judicially-excepted groupings identified by the courts as abstract ideas: (1) mathematical concepts, (2) certain methods of Appeal 2019-004956 Application 14/707,206 9 organizing human activity such as fundamental economic practices, and (3) mental processes. The Examiner finds that the claims “are directed to the abstract idea of published retailer discount purchase offers, which is a fundamental economic practice and/or a method of organizing human activities and/or an idea of itself.” Final Act. 3–4. We agree with the Examiner that claim 1 recites patent-ineligible subject matter. More specifically, claim 1, reproduced above, recites the following steps: [2] “providing an electronic consumer agent…in electronic communication with the consumer,” [3] “providing an electronic publisher…[which] selects a first product from the product information preferential to the consumer to offer to the consumer,” [4] “publishing advertising content…,” [5] “indicating an intent to buy the first product….,” [6] “initiating an electronic negotiation…,” and [7] “providing a shopping list….” App. Br. 51–52. Under the broadest reasonable interpretation, limitations [2] through [7] recite a fundamental economic practice of consumer shopping comprising identifying product information preferential to a consumer, publishing advertising content, indicating an intent to buy, initiating a negotiation to generate a personalized offer for the consumer on the product, and providing a shopping list including the personalized offer to the consumer. The claimed invention is described in the Specification as “optimization of the process of marketing products using a publisher” and describes an “electronic communication network connecting members of the commerce system.” Spec. ¶¶ 12, 16, Fig. 4. The Specification explains that the method controls communication between consumers and retailers to Appeal 2019-004956 Application 14/707,206 10 optimize commerce and specifically shopping. Id. ¶¶ 7, 12. Accordingly, we conclude that the above-identified limitations of claim 1 recite a fundamental economic practice, which is a method of organizing human activity corresponding to the abstract idea judicial exception. B. Guidance Step 2A, Prong 2 Having determined that the claims recite a judicial exception, we next consider whether the claims integrate the judicial exception into a practical application. “[I]ntegration into a practical application” requires that the claim recite an additional element or a combination of elements, that when considered individually or in combination, “apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception.” Guidance at 54. Here, there is no practical integration of the abstract idea. Other than the limitations directed to the abstract idea, discussed above, the remaining step [1] is directed to “providing a database” which includes “a data structure to organize product information preferential to a consumer,” which are generic computer elements. Step [1] does not recite a specific data structure. For this reason, the step is distinguishable from Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1337 (Fed. Cir. 2016) in which the claims were found to be an improvement to conventional databases. Furthermore, this element, as well as the other elements of the claim, are recited at a high level of generality without integrating the abstract ideas into a practical application because Appellant did not establish that they Appeal 2019-004956 Application 14/707,206 11 provide an additional element, outside the abstract idea, that improves the technology or technical field. Appellant argues that, just as in Trading Technologies International, Inc. v. CQG, Inc., 675 Fed. Appx. 1001 (Fed. Cir. 2017), the solution of claim 1 is from a problem specifically arising in the realm of computer networks and computer technology. Appeal Br. 10. Specifically, Appellant asserts that “[t]he features of publishing advertising content ... , indicating an intent to buy ... , and initiating an electronic negotiation ... is part of what makes the claim as a whole recite statutory subject matter.” Id. at 12. According to Appellant, “[t]he claim taken as a whole, improves the functionality of the computing systems by publishing advertising content related to the first product, which is preferential to the consumer according to the data structure, followed by indicating an intent to buy the first product via the consumer using the third computing system.” Id. at 13. Appellant further asserts that claim 1 “adds significantly more than the abstract idea identified by the Examiner, i.e., ‘published retailer discount purchase offers.’” Id. at 14. Appellant concludes that the problem and solution resides in the realm of computer networks and computer technology. Total network and computing utilization, as well as time, is reduced to increase the probability of completing a sale by finding the price point of positive purchasing decision, while reducing unnecessary searching and network communication. Id. at 16. We are not persuaded by Appellant’s arguments. As found by the Examiner, the computer elements and steps recited in the claims (electronic system communication, organized data storage, data transfer) and do not Appeal 2019-004956 Application 14/707,206 12 reflect an improvement in the functioning of a computer or an improvement to other technology or technical field. Ans. 6. We agree with the Examiner that “[m]erely claiming the performance of a targeted retailer discount purchase offer publishing abstract idea by generic databases and computing systems is merely implementing an abstract idea on a computer in a technological environment” and “there are no claim limitations indicating an inventive technical modification to the technical aspects or technical functionalities of any of the claimed electronic network communications.” Id. Furthermore, these claims are distinguishable from those in Trading Technology in which the court found that “[t]he claims require a specific, structured graphical user interface paired with a prescribed functionality directly related to the graphical user interface’s structure.” 675 Fed. Appx. at 1004. In this case, Appellant’s claims do not recite any specific improvement to the computer technology itself. We find that the claims here are more akin to the claims directed to offer-based price optimization that were held to be patent ineligible in OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362–63 (Fed. Cir. 2015) (concluding that the claimed concept of “offer-based price optimization” is an abstract idea “similar to other ‘fundamental economic concepts’ found to be abstract ideas by the Supreme Court and this court); see also buySAFE, Inc. v. Google, Inc., 765 F.3d. 1350, 1355 (Fed. Cir. 2014) (holding that the concept of “creating a contractual relationship–a ‘transactional performance guarantee’” is an abstract idea). Like the representative claim in OIP, Appellant’s claim 1 purports to computerize a fundamental economic practice by broadly reciting generic computer components and concepts Appeal 2019-004956 Application 14/707,206 13 (e.g., a database, an agent,7 a data structure, and electronic communications) to do so. Such elements “[c]onsidered individually or taken together as an ordered combination . . . fail to transform the claimed abstract idea into a patent-eligible application.” OIP, 788 F.3d at 1363 (quotations omitted). Therefore, on this record, we conclude that the ineligible subject matter in Appellant’s claim 1 is not integrated into a practical application. C. Guidance Step 2B Having determined that the judicial exception is not integrated into a practical application, we next evaluate the additional elements individually and in combination to determine whether they provide an inventive concept, such as a specific limitation beyond the judicial exception that is not well- understood, routine, conventional in the field, or simply appends well- understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. See 84 Fed. Reg. 51. Appellant argues that claim 1 adds significantly more than the abstract idea identified by the Examiner, i.e., “published retailer discount purchase offers.” Appeal Br. 14. Appellant also asserts that the Examiner has not provided sufficient support for the conclusion that the claim limitations are well-understood, routine, and conventional. Id. at 14–15. 7 The Specification indicates that an agent, including the “electronic consumer agent” recited in claim 1, is a software application or program (Spec. ¶ 42) that uses APIs to communicate information between consumers and sellers (see, e.g., id. ¶¶ 55, 63). Appeal 2019-004956 Application 14/707,206 14 We are not persuaded by Appellant’s arguments. The additional step [1] recited in claim 1 is providing a database on the first computing system that has a data structure capable of organizing product information preferential to a consumer. There is nothing in the Specification indicating that this step (or any steps or components) recited in the claims are not generic or conventional. For example, the Specification describes that the computer systems used in the electronic computer network include a “general-purpose computer including a central processing unit (CPU) or microprocessor 82, mass storage device or hard disk 84, electronic memory or RAM 86, display monitor 88, and communication port” which “represents a modem, high-speed Ethernet link, wireless, or other electronic connection to transmit and receive data.” Spec. ¶ 37. Appellant points to no additional steps that could not be performed without using a generic computer. The use of a generic computer to perform generic computer functions that are “well-understood, routine, conventional activit[ies]” previously known in the industry is not enough to transform the abstract idea into a patent-eligible invention. See Alice, 573 U.S. at 225–26. We find that Appellant did not provide adequate evidence that the claims require anything other than the use of conventional and well- understood techniques and equipment to gather and process data and initiate an electronic negotiation according to the recited judicial exception. Accordingly, the preponderance of evidence of record supports the Examiner’s finding that Appellant’s claimed invention is directed to patent- ineligible subject matter. The rejection of claim 1 under 35 U.S.C. § 101 is affirmed. Dependent claims 2–6 are not separately argued and fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv). While Appellant separately argues Appeal 2019-004956 Application 14/707,206 15 claims 7–13, 26–31, and 33–37, these arguments are the same “basic arguments from claim 1,” therefore, for the reasons discussed above, we affirm the Examiner’s rejection for these claims. Appeal Br. 16, 20, 24. Rejection of claims 1, 2, 7–9, 26–28, and 33–35 under 35 U.S.C. § 102(a) as being anticipated by Moss As discussed in the Final Office Action at pages 7–16, the Examiner finds that Moss discloses the steps of the claimed methods and the claimed computer readable medium. Final Act. 7–16 (citing Moss ¶¶ 71, 226, 246, 260–262, 270, 272–276, 278–285, 337, 339, 371, 670–672, 679–682 for claims 1 and 33). Appellant argues that Moss does not teach or suggest providing an electronic publisher on a second computing system. Appeal Br. 29. Specifically, Appellant argues that the “Examiner attempts to mesh aspects of the electronic consumer agent and the electronic publisher into one entity, i.e. Cairo” but that “Cairo cannot be both the electronic consumer agent and the electronic publisher, which are two separate elements of claim 1.” Id. at 30. Therefore, according to Appellant, paragraph 71 of Moss has no electronic publisher because, although “Cairo performs searches based on consumer input, [] the text says nothing about accessing the product information preferential to the consumer as organized in the data structure on the first computing system and selecting a first product from the product information preferential to the consumer to offer to the consumer.” Id. The Examiner responds that the Specification does not specifically recite a separate computing system for an electronic publisher but finds that Moss “also discloses web affiliates programs which allow other web site publishers to embed Cairo technology within their own websites to provide Appeal 2019-004956 Application 14/707,206 16 the Cairo consumer agent services using embeddable widgets from within third party sites.” Ans. 15 (citing Moss ¶¶ 91–92, 677). According to the Examiner, “[s]ince these web affiliates and third party sites have their own publisher computing system just as indicated in the Appellant specification and the Cairo functionalities provide the electronic consumer agent limitations, the Moss reference discloses the same limitations claimed by the Appellant.” Id. (citing published Spec.8 ¶¶ 68, 77, 170, 201, 208–210, 212, 224, 232). We agree with the Examiner that Moss discloses providing an electronic publisher on a second computing system and are not persuaded by Appellant’s arguments. Specifically, Moss discloses Cairo Everyday Savings, which “allows consumers to compare prices for the basket of grocery and household items that they shop regularly.” Moss ¶ 226. Furthermore, according to Moss: Cairo finds all of the advertised prices, promotions, special offers, and manufacturer coupons that are currently available for their items. The consumer can build a shopping list and “optimize” that list to find the best combinations of prices, items, and stores to Visit for any Shopping trip. Id. Moss also discloses web affiliates programs, which allow other web site publishers to embed Cairo technology within their own websites to provide the Cairo consumer agent services using embeddable widgets from within third party sites. Moss ¶¶ 91–92, 677. Furthermore, these web 8 Kenneth J. Oiumet, US Pub. No. US 20115/0324828 A1, published Nov. 12, 2015 (“published Spec.”). Appeal 2019-004956 Application 14/707,206 17 affiliates and third party sites have their own publisher computing system. Id. Appellant also argues that Moss does not teach or suggest publishing advertising content related to the first product. Appeal Br. 31. According to Appellant, Moss discloses recommending items to buy from a list of stores, but has “no anticipation of publishing advertising content related to the first product (as selected from the product information preferential to the consumer by the electronic publisher), where the advertising content including the first product is transmitted to the consumer on a third computing system as a personalized and customized advertisement of a product preferential to the consumer.” Id. at 32 (citing Moss ¶ 270). The Examiner responds that Moss discloses publishing advertising content related to the first product, wherein the advertising content including the first product is transmitted to the consumer on a third computing system (Moss: Figures 26-27; [0270], disclosing the publishing of advertising product content related to consumer preferences; [0273], disclosing the displaying of product advertising content related to consumer preferences; [0278]-[0285], disclosing the publishing of targeted product offers based on stored consumer preferences; [0371], disclosing that Cairo is an electronic publisher of product content; [0677]). Ans. 16. We are not persuaded by Appellant’s argument. As cited by the Examiner, Moss discloses: Through Cairo, deep consumer segmentation information can be captured based on consumer behaviors and preferences. This may be combined with retailer’s own customer loyalty data. Cairo makes this information actionable by providing a delivery mechanism to the consumers at the point of decision Appeal 2019-004956 Application 14/707,206 18 making about what to buy on their next shopping trip, targeting information tailored to their specific shopping preferences. Moss ¶ 279. Appellant has not sufficiently explained why this disclosure, and the other disclosures of Moss cited by the Examiner, do not teach or suggest publishing advertising content related to the first product. Appellant also argues that Moss does not teach or suggest indicating an intent to buy the first product via the consumer using the third computer system for reasons similar to those discussed above. Appeal Br. 32–33. Appellant further states that Moss “uses the UPC scans to build up consumer preference database, not to indicate an intent to buy at the moment, which then triggers the electronic negotiation.” Id. at 33. Similarly, Appellant also argues that Moss does not teach or suggest initiating an electronic negotiation by the electronic consumer agent on the first computing system to generate a personalized offer for the consumer for the first product for the reasons discussed above. Appeal Br. 33. Specifically, Appellant asserts: Moss does not relate the first product (originating from publishing advertising content as selected from the product information preferential to the consumer by the electronic publisher) and with the intent to buy the first product, followed by the electronic negotiation when the intent to buy is identified. Id. at 34. Rather, Appellant asserts: Moss prepares an optimal shopping itinerary that delivers the lowest overall price and can re-optimize the list of items to reach an acceptable price and convenience. Moss is missing the point. Moss is working with a shopping list with potentially many items and attempts to optimize the list for lowest overall price. If the consumer does not accept, Moss can try again. But there is no indication of present intent to buy in combination Appeal 2019-004956 Application 14/707,206 19 with electronic negotiation to capture the potential sale, as in claim 1. Id. The Examiner responds that Moss discloses multiple instances of indicating an intent to buy the first product via the consumer using the third computing system, wherein the intent to buy is transmitted to the electronic consumer agent on the first computing system (Moss: [0246], wherein scanning a frequently purchased product for sending to publisher is an intent to buy; [0261], wherein marking displayed preferred items is indicating an intent to buy, [0274], wherein checking an offer for an item is indicating an intent to buy; [0339], wherein scanning a product to initiate price comparison is indicating an intent to buy). Ans. 17. The Examiner further responds that there is no claim limitation referring to an “indication of present intent to buy” and that the claim limitations regarding intent to buy have no reference to a present timing of this indication. Ans. 17. Furthermore, the Examiner finds that Moss: discloses multiple instances of indicating an intent to buy and initiating an electronic negotiation by the electronic consumer agent on the first computing system to generate a personalized offer for the consumer for the first product based on the collected consumer information, including intent to buy (Moss: [0272]-[0273], disclosing the generation of personalized offers for consumers; [0278]-[0285] disclosing usage of electronically negotiated offers, “Cairo Everyday Savings provides retailers and manufacturers with many opportunities to offer the consumer special offers, one-to-one promotions, and/or individual pricing”, “offering “individual pricing” and/or additional coupons/discounts to consumers if they buy the entire shopping list from them”, “retailer may offer additional discounts targeted at some of the individual items that drive overall basket profitability--matching locally advertised prices”). Appeal 2019-004956 Application 14/707,206 20 Id. at 17–18. We are not persuaded by Appellant’s argument. As pointed out by the Examiner, there is no limitation in the claims that requires the consumer to commit to buying a product. Rather, according to the claims, a consumer indicates an intent to buy in step [5]which initiates an electronic negotiation, which ultimately results in a shopping list and personalized offer to the consumer. These limitations are disclosed in Moss, for example, when it discusses a consumer re-optimizing their shopping list “until they have a list of items at a price and convenience that is acceptable,” and “calculate[ing] an optimal shopping itinerary” that meets the “consumer’s shopping criteria,” as well as the possibility of “individual pricing.” Moss ¶¶ 272, 274, 281. These elements (as well as those cited by the Examiner) disclose indicating an intent to buy, initiating a negotiation, and providing a shopping list with a personalized offer. Therefore, Appellant has not sufficiently explained why the portions of Moss cited by the Examiner do not disclose the disputed claim limitations. Accordingly, the rejection of claim 1 under 35 U.S.C. § 103 as being anticipated by Moss is affirmed. Dependent claim 2 is not separately argued and falls with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv). While Appellant separately argues claims 7–9, 26–28, and 33–35, these arguments are essentially the same arguments as presented for claim 1 and, therefore, for the reasons discussed above, we also affirm the Examiner’s rejection of these claims. Appeal Br. 35–49. Rejection of claims 3, 6, 10, 12, 29, and 31 under 35 U.S.C. § 103 as being obvious Moss in view of Sisselman Appeal 2019-004956 Application 14/707,206 21 The Examiner’s findings with respect to Moss are discussed above. The Examiner also finds that Moss does not explicitly teach using a Quick Response code of the first product but that this deficiency is cured by Sisselman, which teaches publishing a Quick Response code of the first product. Final Act. 16 (citing Sisselman ¶¶ 10, 26). The Examiner finds that “it would have been obvious to one of ordinary skill in the art at the time of filing to combine the commerce system control method of Moss with the commerce system control methods of Sisselman in order to specify effective methods for assisting a consumer utilizing the commerce system and associated content.” Id. at 17 (citing Moss ¶¶ 246, 327, 339; Sisselman ¶¶ 10, 26). Appellant does not make additional arguments with respect to this rejection, but simply asserts that these claims are in condition for allowance as they depend from an allowable base claim. Appeal Br. 49. Therefore, for the reasons discussed above, we affirm the Examiner’s rejection of claims 3, 6, 10, 12, 29, and 31 under 35 U.S.C. § 103 as being obvious Moss in view of Sisselman. Rejection of claims 4, 5, 11, 13, 30, 32, 36, and 37 under 35 U.S.C. § 103 as being obvious Moss in view of Rose The Examiner’s findings with respect to Moss are discussed above. The Examiner also finds that Moss does not explicitly teach a histogram but that this deficiency is cured Rose, which teaches a histogram. Final Act. 18 (citing Rose ¶ 147). The Examiner finds that “it would have been obvious to one of ordinary skill in the art at the time of filing to combine the commerce Appeal 2019-004956 Application 14/707,206 22 system control method of Moss with the commerce system control methods of Rose in order to specify effective methods for assisting a consumer utilizing the commerce system and associated content.” Id. (citing Moss, Figures 8, 20, 26, ¶¶ 76, 107, 344, 348, 371; Rose ¶¶ 3, 147). Appellant does not make any specific arguments regarding this obviousness rejection. Therefore, for the reasons discussed above, we affirm the Examiner’s rejection of claims 4, 5, 11, 13, 30, 32, 36, and 37 under 35 U.S.C. § 103 as being obvious Moss in view of Rose. CONCLUSION For the reasons described herein and those already of record, we affirm the Examiner’s rejection of claims 1–13 and 26–37. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–13, 26–37 101 Eligibility 1–13, 26–37 1, 2, 7–9, 26–28, 33– 35 102(a)(1)/ 102(a)(2) Moss 1, 2, 7–9, 26–28, 33– 35 3, 6, 10, 12, 29, 31 103 Moss, Sisselman 3, 6, 10, 12, 29, 31 4, 5, 11, 13, 30, 32, 36, 37 103 Moss, Rose 4, 5, 11, 13, 30, 32, 36, 37 Overall Outcome 1–13, 26–37 TIME PERIOD FOR RESPONSE Appeal 2019-004956 Application 14/707,206 23 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. § 1.136(a)(1)(iv). AFFIRMED Copy with citationCopy as parenthetical citation