Yimin Liu et al.Download PDFPatent Trials and Appeals BoardMay 1, 20202018008857 (P.T.A.B. May. 1, 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. 13/300,892 11/21/2011 Yimin Liu 83209050 2836 28395 7590 05/01/2020 BROOKS KUSHMAN P.C./FGTL 1000 TOWN CENTER 22ND FLOOR SOUTHFIELD, MI 48075-1238 EXAMINER NGUYEN, THUY N ART UNIT PAPER NUMBER 3681 NOTIFICATION DATE DELIVERY MODE 05/01/2020 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): docketing@brookskushman.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte YIMIN LIU, PERRY ROBINSON MACNEILLE, OLEG YURIEVITCH GUSIKHIN, SCOTT MICHAEL KELLY, and MARK SCHUNDER, ____________ Appeal 2018-008857 Application 13/300,892 Technology Center 3600 ____________ Before MURRIEL E. CRAWFORD, ANTON W. FETTING, and ROBERT J. SILVERMAN, Administrative Patent Judges. CRAWFORD, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant1 seeks our review under 35 U.S.C. § 134 of the Examiner’s final rejection of claims 1−14 and 17−19. We have jurisdiction under 35 U.S.C. § 6(b). SUMMARY OF DECISION We AFFIRM. 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as Ford Global Technologies, LLC. (Appeal Br. 2). Appeal 2018-008857 Application 13/300,892 2 THE INVENTION Appellant claims a method of selecting an advertisement for delivery based at least in part on data retrieved respective to identified occupants and data relating to the vehicle environment. (Spec. ¶ 4). Claim 1 is representative of the subject matter on appeal. 1. A computer-implemented method comprising: obtaining an identity of a vehicle occupant; obtaining data relating to a current vehicle environment; selecting an advertisement based on data retrieved respective to the identified occupant, data relating to the vehicle environment, and a driver cognitive load; tailoring a coupon to correspond to a type of discount the identified occupant has historically accepted; and transmitting the selected advertisement and tailored coupon to a vehicle. THE REJECTION Claims 1−14 and 17−19 are rejected under 35 U.S.C. § 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more. Claims 1, 7–11, 17, and 18 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Weber (US 2005/0024189 A1; published Feb. 3, 2005), in view of Massey et al. (US 7,365,651 B2; issued Apr. 29, 2008), and further in view of Grigg et al. (US 2013/0046626 A1; published Feb. 21, 2013). Claims 2–4, 6, and 14 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Weber, in view of Massey, in view of Grigg, and further in view of Divine et al. (US 2013/0030645 A1; published Jan. 31, 2013). Appeal 2018-008857 Application 13/300,892 3 Claim 5 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Weber, in view of Massey, in view of Grigg, in view of Divine, and further in view of Torkkola et al. (US 7,292,152 B2; issued Nov. 6, 2007). Claims 12 and 19 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Weber, in view of Massey, in view of Grigg, and further in view of Schwarz et al. (US 2013/0066720 A1; published Mar. 14, 2013). Claim 13 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Weber, in view of Massey, in view of Grigg, in view of Schwarz, and further in view of Conner (US 2013/0054132 A1; published Feb. 28, 2013). ANALYSIS 35 U.S.C. § 101 REJECTION We will sustain the rejection of claims 1–14 and 17−19 under 35 U.S.C. § 101. The Supreme Court set forth a framework for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of those concepts. First, . . . determine whether the claims at issue are directed to one of those patent-ineligible concepts. . . . If so, . . . then ask, “[w]hat else is there in the claims before us?” . . . To answer that question, . . . consider the elements of each claim both individually and “as an ordered combination” to determine whether the additional elements “transform the nature of the claim” into a patent-eligible application. . . . [The Court] described step two of this analysis as a search for an “‘inventive concept’”—i.e., an element or combination of elements that is “sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] Appeal 2018-008857 Application 13/300,892 4 itself.” Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 217–18 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 72–73 (2012)) (citations omitted). To perform this test, we must first determine whether the claims at issue are directed to a patent-ineligible concept. The Federal Circuit has explained that “the ‘directed to’ inquiry applies a stage-one filter to claims, considered in light of the [S]pecification, based on whether ‘their character as a whole is directed to excluded subject matter.’” See Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016) (quoting Internet Patents Corp., 790 F.3d 1343, 1346 (Fed. Cir. 2015)). It asks whether the focus of the claims is on a specific improvement in relevant technology or on a process that itself qualifies as an “abstract idea” for which computers are invoked merely as a tool. See id. at 1335–36. In so doing we apply a “directed to” two prong test: 1) evaluate whether the claim recites a judicial exception, and 2) if the claim recites a judicial exception, evaluate whether the judicial exception is integrated into a practical application. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50, 50–57 (Jan. 7, 2019). The Examiner determines that the claims are directed to multiple abstract ideas including organizing human activity related to advertising and collecting and comparing known information. (Final Act. 3−4). The Examiner finds the additional elements in claim 1 are recited at a high level of generality and/or is recited as performing generic computer functions routinely used in computer applications thus they are not significantly more than the identified abstract ideas. The generic computer components recited as performing generic computer functions that are well-understood, routine Appeal 2018-008857 Application 13/300,892 5 and convention activity amounts to no more than implementing the abstract idea with computerized system. (Final Act. 4). The Specification states that advanced vehicle computer systems, including modern infotainment systems, have the capability to deliver “tailored” content to one or more users based on input or observed user preferences. The delivery of this content is hampered because it uses fixed sets of preferences which lack real-time information on user preferences. (Spec. ¶ 2). The content may be advertising which is often too generalized at a high level. As such, it is desired to obtain additional information. The method of the invention includes obtaining data relating to a current vehicle environment and selecting advertisement for delivery based at least in part of data retrieved respective to identified occupants and data relating to the vehicle environment. (Spec. ¶ 4). Consistent with this disclosure, claim 1 recites “obtaining an identity of a vehicle occupant,” “ obtaining data relating to current vehicle environment,” “selecting an advertisement based on data retrieved,” “tailoring a coupon to correspond to a type of coupon,” “transmitting the selected advertisement.” We thus agree with the Examiner’s findings that the claims are directed to advertising. Advertising is a fundamental economic practice which is the judicial exception of a certain method of organizing human activity. Guidance, 84 Fed. Reg. at 52. Also, we agree with the Examiner that claim 1 is directed collecting and comparing known information and find the steps of “obtaining an identity of the vehicle occupant,” “obtaining data relating to a current vehicle environment,” “selecting an advertisement,” “transmitting the selected advertisement” constitute “analyzing information by steps people Appeal 2018-008857 Application 13/300,892 6 go through in their minds, or by mathematical algorithms, without more, as essentially mental processes within the abstract-idea category.” Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016); see also buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014) (claims directed to certain arrangements involving contractual relations are directed to abstract ideas). Thus, we find that the claims recite the judicial exceptions of a method of organizing human activity and in the alternative a mental process. Turning to the second prong of the “directed to test”, claim 1 requires a “computer” The recitation of the word “computer” does not impose “a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception.” Guidance, 84 Fed. Reg. at 54. We find no indication in the Specification, nor does Appellant direct us to any indication, that the operations recited in independent claim 1 invoke any inventive programming, require any specialized computer hardware or other inventive computer components, i.e., a particular machine, or that the claimed invention is implemented using other than generic computer components to perform generic computer functions. See DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014) (“[A]fter Alice, there can remain no doubt: recitation of generic computer limitations does not make an otherwise ineligible claim patent-eligible.”). We also find no indication in the Specification that the claimed invention effects a transformation or reduction of a particular article to a different state or thing. Nor do we find anything of record, short of attorney argument, that attributes any improvement in computer technology and/or functionality to the claimed invention or that otherwise indicates that the Appeal 2018-008857 Application 13/300,892 7 claimed invention integrates the judicial exception into a “practical application,” as that phrase is used in the revised Guidance. Guidance, 84 Fed. Reg. at 55. In this regard, the recitation does not effect an improvement in the functioning of a computer or other technology, does not recite a particular machine or manufacture that is integral to the claims, and does not transform or reduce a particular article to a different state or thing. Id. We view the recitation of “a vehicle” to be a recitation of post solution activity or technological environment. The prohibition against patenting an abstract idea ‘“cannot be circumvented by attempting to limit the use of the formula to a particular technological environment’[ ]or adding ‘insignificant post-solution activity.”’ Bilski v. Kappos, 561 U.S. 593, 610- 11 (2010) (internal citation and quotation marks omitted). Additional elements that merely add insignificant extra-solution activity to an abstract idea fail to integrate the abstract idea into a patent-eligible practical application. Guidance 84 Fed. Reg. at 55. Thus, claim 1 is directed to judicial exceptions that are not integrated into a practical application and therefore claim 1 is directed to an “abstract ideas.” Turning to the second step of the Alice analysis, because we find that the claims are directed to abstract ideas, the claims must include an “inventive concept” in order to be patent-eligible, i.e., there must be an element or combination of elements that is sufficient to ensure that the claim in practice amounts to significantly more than the abstract idea itself. See Alice, 573 U.S. at 217-18 (alteration in original) (quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 72–73 (2012)). Appeal 2018-008857 Application 13/300,892 8 The introduction of a computer into the claims does not alter the analysis at Alice step two: [T]he mere recitation of a generic computer cannot transform a patent-ineligible abstract idea into a patent-eligible invention. Stating an abstract idea “while adding the words ‘apply it’” is not enough for patent eligibility. Nor is limiting the use of an abstract idea “‘to a particular technological environment.’” Stating an abstract idea while adding the words “apply it with a computer” simply combines those two steps, with the same deficient result. Thus, if a patent’s recitation of a computer amounts to a mere instruction to “implemen[t]” an abstract idea “on . . . a computer,” that addition cannot impart patent eligibility. This conclusion accords with the preemption concern that undergirds our § 101 jurisprudence. Given the ubiquity of computers, wholly generic computer implementation is not generally the sort of “additional featur[e]” that provides any “practical assurance that the process is more than a drafting effort designed to monopolize the [abstract idea] itself.” Alice, 573 U.S. at 223 (alterations in original) (citations omitted). Instead, “the relevant question is whether the claims here do more than simply instruct the practitioner to implement the abstract idea . . . on a generic computer.” Id. at 225. They do not. Taking the claim elements separately, the function performed by the computer at each step of the process is purely conventional. Using a computer to retrieve, select, and apply decision criteria to data and modify the data as a result amounts to electronic data query and retrieval—one of the most basic functions of a computer. All of these computer functions are well-understood, routine, conventional activities previously known to the Appeal 2018-008857 Application 13/300,892 9 trading industry. See Elec. Power Grp., 830 F.3d at 1354; see also In re Katz Interactive Call Processing Patent Litig., 639 F.3d 1303, 1316 (Fed. Cir. 2011) (“Absent a possible narrower construction of the terms ‘processing,’ ‘receiving,’ and ‘storing,’ . . . those functions can be achieved by any general purpose computer without special programming”). In short, each step does no more than require a generic computer to perform generic computer functions. As to the data operated upon, “even if a process of collecting and analyzing information is ‘limited to particular content’ or a particular ‘source,’ that limitation does not make the collection and analysis other than abstract.” SAP Am. Inc. v. InvestPic, LLC, 890 F.3d 1016, 1022 (Fed. Cir. 2018). Considered as an ordered combination, the computer components of Appellant’s claims add nothing that is not already present when the steps are considered separately. The sequence of data reception-analysis- access/display is equally generic and conventional or otherwise held to be abstract. See Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014) (sequence of receiving, selecting, offering for exchange, display, allowing access, and receiving payment recited an abstraction), Inventor Holdings, LLC v. Bed Bath & Beyond, Inc., 876 F.3d 1372, 1378 (Fed. Cir. 2017) (holding that sequence of data retrieval, analysis, modification, generation, display, and transmission was abstract), Two-Way Media Ltd. v. Comcast Cable Commc’ns, LLC, 874 F.3d 1329, 1339 (Fed. Cir. 2017) (holding sequence of processing, routing, controlling, and monitoring was abstract). The ordering of the steps is, therefore, ordinary and conventional. The claims do not, for example, purport to improve the functioning of the computer itself. As we stated above, the claims do not affect an improvement in any other technology or technical field. The Specification Appeal 2018-008857 Application 13/300,892 10 spells out different generic equipment and parameters that might be applied using this concept and the particular steps such conventional processing would entail based on the concept of information access under different scenarios. (Spec. ¶ 33). Thus, the claims at issue amount to nothing significantly more than instructions to apply the abstract idea of information access using some unspecified, generic computer. Under our precedents, that is not enough to transform an abstract idea into a patent-eligible invention. See Alice, 573 U.S. at 226. We have reviewed all the arguments (Appeal Br. 5−8; Reply Br. 2−4) Appellant has submitted concerning the patent eligibility of the claims before us that stand rejected under 35 U.S.C. § 101. We find that our analysis above substantially covers the substance of all the arguments, which have been made. But, for purposes of completeness, we will address various arguments in order to make individual rebuttals of same. We are not persuaded of error on the part of the Examiner by Appellant’s argument that the Examiner failed to provide any evidence that the whole claim represents a routine or common approach, which fails the instructions set forth by the Federal Circuit in Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018) (hereinafter “Berkheimer”). Addressing step two of the Mayo/Alice framework in Berkheimer, the Federal Circuit held that the 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, 881 F.3d at 1368. Yet, the law is clear that the claim elements to be considered (when determining whether the claims include additional elements or a combination of elements that amount to “significantly more” that the judicial exception) cannot be the abstract idea itself. See Mayo, Appeal 2018-008857 Application 13/300,892 11 566 U.S. at 72–73 (requiring that “a process that focuses upon the use of a natural law also contain other elements or a combination of elements, sometimes referred to as an ‘inventive concept,’ sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the natural law itself” (emphasis added)); see also BSG Tech. LLC v. BuySeasons, Inc., 899 F.3d 1281, 1290 (Fed. Cir. 2018) (“It has been clear since Alice that a claimed invention’s use of the ineligible concept to which it is directed cannot supply the inventive concept that renders the invention ‘significantly more’ than that ineligible concept.”). “[A]nd Berkheimer . . . leave[s] untouched the numerous cases from [the Federal Circuit] which have held claims ineligible because the only alleged ‘inventive concept’ is the abstract idea.” Berkheimer v. HP, Inc., 890 F.3d 1369, 1374 (Fed. Cir. 2018) (Moore, J., concurring); see also BSG Tech., 899 F.3d at 1290 (“Our precedent has consistently employed this same approach. If a claim’s only ‘inventive concept’ is the application of an abstract idea using conventional and well-understood techniques, the claim has not been transformed into a patent-eligible application of an abstract idea.”). Thus, in Berkheimer, where certain of the claims at issue recited features of a digital asset management system that the Specification described as unconventional improvements over conventional systems, the Federal Circuit determined that there was a genuine issue of material fact, making summary judgment inappropriate. Berkheimer, 881 F.3d at 1370. Here, the Appellant argues that even though the steps recited in the claims use well known components, the steps perform identity verification in a non-conventional and non-generic way. (Appeal Br. 6-7). However, as we discussed above, the Berkheimer decision relates to whether the elements in addition to the abstract idea are well-known, routine and conventional. Appeal 2018-008857 Application 13/300,892 12 The only recitation in claim 1 that is not part of the abstract ideas of advertising and collecting and comparing known information is the recitation of a “computer implemented method” and “a vehicle.” Therefore, the Appellant is not correct that the proper inquiry is whether the whole solution represented by the claims in “conventional” or “typical.” (Appeal Br. 7). As we find above, the recitation of a “computer” and a “vehicle” does not affect an improvement to the computer or vehicle of any other technology and thus these recitations do not integrate the abstract ideas into a practical application or amount to significantly more than the abstract ideas. We find untimely Appellant’s argument in the Reply Brief for the eligibility of the claims based on Core Wireless Licensing v. LG Electronics, Inc., 880 F.3d 1356, 2018 WL 542672; Nos. 2016-2684, 20171922 (Fed. Cir. Jan. 25, 2018). (Reply Br. 3–4). We note that these new arguments were raised by Appellant for the first time in the Reply Brief, and they are not in response to a new issue brought up by the Examiner in the Answer. We also note that Core Wireless came out prior to Appellant’s Appeal Brief filing, and was therefore not an intervening opinion. Appellant are reminded that: [T]he purpose of a reply brief is to ensure the Appellant the opportunity to have the last word on an issue raised by the Examiner. The reply brief enables the Appellant to address any new grounds of rejection the Examiner may have raised in the answer, or to address changes or developments in the law that may have occurred after the principal brief was filed. The reply brief is not an opportunity to make arguments that could have been made during prosecution, but were not. Nor is the reply brief an opportunity to make arguments that could have been made in the principal brief on appeal to rebut the Examiner's rejections, but were not. Appeal 2018-008857 Application 13/300,892 13 Giving cognizance to belated arguments in a reply would vitiate the force of the requirement in Board Rule 37(c)(1)(vii) that “[a]ny arguments or authorities not included in the brief... will be refused consideration by the Board, unless good cause is shown.” The reference in that section to the “reply brief filed pursuant to § 41.41” does not create a right for the Appellant to raise an argument in the reply brief that could have been raised in the principal brief but was not. Rather, that reference merely puts Appellants on notice that arguments that could be made in the reply brief, but are not, are waived. Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010) (informative). We therefore consider this argument raised for the first time in the Reply Brief to be waived. As to Appellant’s argument that “the Examiner still must show that ‘tailoring a coupon to correspond to a type of discount the identified occupant has historically accepted’ is not routine, because it certainly is not abstract,” Reply Brief 3, this is a conclusory argument. In any event, tailoring data is modifying data, an operation so conventional it existed when programs were toggled in with switches on the processor front plate. Appellant presumably refers to the data being so modified, but the origin and label of data cannot confer eligibility. SAP America, Inc. v. InvestPic LLC, 898 F.3d 1161, 1168 (Fed. Cir. 2018). Accordingly, we sustain the rejection of independent claim 1 under 35 U.S.C. § 101. We will also sustain this rejection as it is directed to the remaining claims because Appellant has not argued the separate eligibility of these claims. OBVIOUSNESS REJECTIONS We will affirm these rejections. Appellant argues that the prior art does not disclose “tailoring a coupon to correspond to a type of discount the identified occupants has historically accepted.” The Examiner relies on Grigg for teaching this subject matter. However, Appellant argues that Appeal 2018-008857 Application 13/300,892 14 Grigg teaches that an offer can be tailored to a type of product not a type of discount. Appellant relies on paragraph 64 of the Specification for teaching a type of discount. Paragraph 64 discloses: if a user is known to positively react to food-based coupons, and is further 50% more likely to react to any deal providing, for example, a buy one get one deal on fast food, the server may allow a custom coupon to be built for that user based on observed behavior. Other suitable coupons may also be assembled or found 505 based on previously observed behavior. We agree with the Examiner’s response to this rejection found on pages 14−17 of the Answer and adopt it as our own. In this respect, the language of claim 1 is broad enough to include tailoring a coupon to correspond to the type of product discounts the identified occupant has historically accepted. In view of the foregoing, we will affirm the Examiner’s rejection of claim 1 under 35 U.S.C. § 103(a). We will also affirm the 35 U.S.C. § 103(a) rejections of the remaining claims for the same reason. CONCLUSIONS OF LAW In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1−14, 17−19 101 Eligibility 1−14, 17−19 1, 7–11, 17, 18 103 Weber, Massey, Grigg 1, 7–11, 17, 18 2–4, 6, 14 103 Weber, Massey, Grigg, Divine 2–4, 6, 14 Appeal 2018-008857 Application 13/300,892 15 5 103 Weber, Massey, Grigg, Divine, Torkkola 5 12, 19 103 Weber, Massey, Grigg, Schwarz 12, 19 13 103 Weber, Massey, Grigg, Schwarz, Conner 13 Overall Outcome 1–14, 17–19 DECISION The decision of the Examiner to reject claims 1−14 and 17−19 is affirmed. 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