Debashis Ghosh et al.Download PDFPatent Trials and Appeals BoardJul 24, 201914269685 - (D) (P.T.A.B. Jul. 24, 2019) 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. 14/269,685 05/05/2014 Debashis GHOSH 0076412-000230 6895 21839 7590 07/24/2019 BUCHANAN, INGERSOLL & ROONEY PC POST OFFICE BOX 1404 ALEXANDRIA, VA 22313-1404 EXAMINER FRUNZI, VICTORIA E. ART UNIT PAPER NUMBER 3688 NOTIFICATION DATE DELIVERY MODE 07/24/2019 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): ADIPDOC1@BIPC.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ________________ Ex parte DEBASHIS GHOSH and RANDALL K. SHUKEN1 ________________ Appeal 2017-009396 Application 14/269,685 Technology Center 3600 ________________ Before BRADLEY W. BAUMEISTER, MICHAEL J. STRAUSS, and PHILLIP A. BENNETT, Administrative Patent Judges. BAUMEISTER, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final rejection of claims 1–30. Appeal Br. 1. These claims stand rejected under 35 U.S.C. § 101 as being directed to patent-ineligible subject matter and under 35 U.S.C. § 102(a) as being unpatentable. Final Action mailed Dec. 22, 2016 (“Final Act.”) 2–14. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 Appellants identify Mastercard International, Inc. as the real party in interest. Appeal Brief filed February 21, 2017 (“Appeal Br.”) 2. Appeal 2017-009396 Application 14/269,685 2 THE INVENTION Appellants describe the present invention as systems and methods for better customizing advertisements presented to consumers who are users of smart phones and other computing devices. Spec. ¶¶ 2, 5. Appellants acknowledge that it was known to customize advertisements presented to consumers on computer devices based upon the consumer’s Internet browsing history. Spec. ¶ 2. Appellants recognize that once the consumer makes a purchase, the consumer’s need for the purchased product or service (such as a hotel reservation) may diminish or expire, but it previously was common for consumers to still receive advertisements for such products and services. Id. ¶ 3. Appellants’ invention addresses this problem by using “purchase data for payment transactions made by a consumer to suppress advertisements distributed to the consumer.” Spec. ¶ 1. Independent claim 1 illustrates the claimed invention. It is reproduced below with formatting modified for clarity and with emphasis added to the language that recites an abstract idea: 1. A method for identifying purchase data for advertisement suppression, comprising: [i] receiving, by a receiving device, a data file originating from a computing device, wherein the data file includes at least a computer identifier associated with the computing device, a purchase identifier, and an origination time and/or date; [ii] receiving, by the receiving device, transaction data for a payment transaction, where a portion of the transaction data corresponds to the purchase identifier, wherein the transaction data includes at least purchase data and a transaction time and/or date, and wherein the transaction time and/or date is within a predetermined period of time of the origination time and/or date; and Appeal 2017-009396 Application 14/269,685 3 [iii] transmitting, by a transmitting device, at least the purchase data included in the received transaction data and the computer identifier for suppression of advertisements distributed to the computing device based on at least the purchase data. THE REJECTION UNDER 35 U.S.C. § 101 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 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 Supreme Court’s two-step framework, described in Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66 (2012), and Alice. Alice, 573 U.S. at 217–18 (citing Mayo, 566 U.S. at 75–77). In accordance with that framework, we first determine what concept the claim is “directed to.” 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 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); Appeal 2017-009396 Application 14/269,685 4 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 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 water-proof cloth, vulcanizing India rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S. 252, 267–68 (1854))); and manufacturing flour (Benson, 409 U.S. at 69 (citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))). In Diehr, the claim at issue recited a mathematical formula, but the Supreme Court held that “[a] claim drawn to subject matter otherwise statutory does not become nonstatutory simply because it uses a mathematical formula.” Diehr, 450 U.S. at 176; see also id. at 191 (“We view respondents’ claims as nothing more than a process for molding rubber products and not as an attempt to patent a mathematical formula.”). Having said that, the Supreme Court also indicated that a claim “seeking patent protection for that formula in the abstract . . . is not accorded the protection of our patent laws, and this principle cannot be circumvented by attempting to limit the use of the formula to a particular technological environment.” Id. (citing Benson and Flook); see, e.g., id. at 187 (“It is now commonplace that an application of a law of nature or mathematical formula to a known structure or process may well be deserving of patent protection.”). If the claim is “directed to” an abstract idea, we turn to the second step 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 (citation omitted). “A claim Appeal 2017-009396 Application 14/269,685 5 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. B. USPTO SECTION 101 GUIDANCE: The United States Patent and Trademark Office (“USPTO”) recently published revised guidance on the application of 35 U.S.C. § 101. USPTO, 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“2019 Guidance”). Under the 2019 Guidance, we first look to whether the claim recites the following: (1) any judicial exceptions, including certain groupings of abstract ideas (i.e., mathematical concepts, certain methods of organizing human activities such as a fundamental economic practice, or mental processes); and (2) additional elements that integrate the judicial exception into a practical application (see MPEP §§ 2106.05(a)–(c), (e)–(h)). See 2019 Guidance, 84 Fed. Reg. at 52–55. Only if a claim (1) recites a judicial exception and (2) does not integrate that exception into a practical application, do we then look 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 Appeal 2017-009396 Application 14/269,685 6 (4) simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. See 2019 Guidance, 84 Fed. Reg. at 56. Analysis2 STEP 2A, PRONG 1: Claims 1–30 stand rejected under 35 U.S.C. § 101 as being directed to patent-ineligible subject matter. Final Act. 2–4. The Examiner determines that receiving and sending data constitute abstract ideas. Final Act. 3. Appellants argue that [s]ummarizing the Appellant’s claims as being directed to only “providing an advertisement based on a consumer’s purchase data” ignores the technological features and required communications recited in the Appellant’s claims. . . . Applicant’s claims are directed to new and useful electronic processes and devices for identifying a purchase that is related to specific computing device and suppressing advertisements provided to that computing device to avoid the advertising of already purchased products. Appeal Br. 11. This argument is unpersuasive. The fact that the claims additionally recite computer components such as “a receiving device” and “a transmitting device” is appropriately addressed under step 2A, prong 2, and step 2B of the 2019 Guidance. The relevant inquiry under step 2A, prong 1, is whether claim 1 recites one or more abstract ideas. For the following reasons, we conclude that claim 1 does. 2 Appellants argue claims 1–30 together as a group in relation to the § 101 rejection. See Appeal Br. 9–18. Accordingly, we select independent claim 1 as representative of these claims. See 37 C.F.R. § 41.37(c)(1)(iv). Appeal 2017-009396 Application 14/269,685 7 Limitation [i] recites “receiving, by a receiving device, a data file originating from a computing device, wherein the data file includes at least a computer identifier associated with the computing device, a purchase identifier, and an origination time and/or date.” Claim 1 (emphasis added). Receiving a data file that contains particular types of information relating to a purchase reasonably can be characterized as a commercial interaction entailing marketing or sales activities. Marketing and sales activities are certain methods of organizing human activity that the 2019 Guidance recognizes as constituting abstract ideas. Accordingly, limitation [i] reasonably can be characterized as reciting an abstract idea. Limitation [ii] of claim 1 similarly recites receiving particular types of data for a payment transaction, and limitation [iii] recites transmitting the purchase data that was received in the transaction data. For the reasons explained in relation to limitation [i], then, limitations [ii] and [iii] also reasonably can be characterized as reciting certain methods of organizing human activity that the 2019 Guidance recognizes as abstract ideas. STEP 2A, PRONG 2: We next inquire whether claim 1 integrates the recited abstract ideas into a practical application. See 2019 Guidance 84 Fed. Reg. at 54–55; see also MPEP §§ 2106.05(a)–(c) and (e)–(h). The Examiner determines that the claims do not improve the functioning of a computer, another technology, or another field. Final Act. 4. The Examiner determines that the claims, when viewed as a whole, do not add meaningful limitations that amount to more than generally linking the use of the abstract idea to a particular technological environment. Id. at 4–5. Appeal 2017-009396 Application 14/269,685 8 Appellants argue that the Examiner errs in “[s]ummarizing the Appellant’s claims as being directed to only ‘providing an advertisement based on a consumer’s purchase data.’” Appeal Br. 11 (citing Final Act. 2). Appellants argue that such a characterization ignores the claimed technological features and required communications. Id. Appellants argue that the “claims are directed to new and useful electronic processes and devices for identifying a purchase that is related to specific computing device and suppressing advertisements provided to that computing device to avoid the advertising of already purchased products.” Id. More specifically, Appellants argue that the claims include “technical steps involved in identifying the consumer’s purchase data, which notably is based on the purchase data of a computing device and not a consumer.” Id. Appellants argue that When a user is browsing an Internet website, [a prior art] advertising service may have access to [the user’s] browsing history and may serve advertisements based thereon. However, such a service does not have access to any transactional data for that user or have any method to identify the user to obtain such data. Furthermore, browsing history may inform the advertising service when a user navigates to a web page to make a transactions, but cannot identify if the user actually completes the transaction[,] particularly if the user buys at a physical location or another website. This can be a key difference for serving advertisements, as an advertisement may be even more likely to result in a conversion if the user never went through with the transactions, while, on the other hand, an advertisement may be extremely unlikely to result in a conversion if a transaction already took place. Id. at 12. Appellants argue that the present invention “seeks to determine when advertisements should be suppressed when they otherwise would be served Appeal 2017-009396 Application 14/269,685 9 in instances where a computing device is unable to accurately identify the occurrence of a payment transaction.” Appeal Br. 12–13. Appellants contend that the claimed invention, then, solve[s] a particular problem in the software arts, specifically the inability to identify if a transaction has occurred as related to a computing device’s browsing history, which is performed via changes to logical structures and processes of computing devices and interactions and exchanges of data between computing devices in a unique way to solve a technical problem. Appeal Br. 15–16. These arguments are unpersuasive. As a threshold matter, Appellants arguments are not commensurate in scope with the claim language. As correctly noted by the Examiner, claim 1 does not affirmatively recite suppressing advertisement. Examiner’s Answer mailed May 9, 2017 (“Ans.”) 3. Rather, the advertisement suppression is recited in the claims as an intended result—or reason for why the purchase data is transmitted. Id. Claim 1, instead, only affirmatively recites receiving certain information and transmitting certain information. Because claim 1 does not recite any actions being performed with the data, the received and transmitted data reasonably can be interpreted as constituting non-functional descriptive material that does not further distinguish the claim over the broad steps of receiving and transmitting data. See Praxair Distrib., Inc. v. Mallinckrodt Hosp. Prod. IP Ltd., 890 F.3d 1024, 1032 (Fed. Cir. 2018) (“Claim limitations directed to the content of information and lacking a requisite functional relationship are not entitled to patentable weight because such information is not patent eligible subject matter under 35 U.S.C. § 101.”). Appeal 2017-009396 Application 14/269,685 10 Even if we were to assume, though, solely for the sake of argument and compact prosecution, that claim 1 affirmatively recited suppressing advertisements based on transmitted purchase data that, in turn, includes transaction data and computer identifier data, this fact would not constitute sufficient evidence that claim 1 integrates the recited abstract ideas into a practical application. Deciding whether to suppress delivery of an advertisement based upon a consumer’s purchase history is a mental evaluation or judgment that could have been carried out by a human prior to the advent of the Internet simply by observing the consumer’s purchase history. Deciding whether to suppress delivery of an advertisement in this manner also can be characterized alternatively as an advertising, marketing, or sales activity—a certain method of organizing human activity. That is, Appellants’ arguments relate to a purported improvement in the underlying abstract idea—not to an improvement in the integration of a given abstract idea. Accordingly, Appellants have not established that the claims integrate the recited abstract ideas into a practical application, pursuant to step 2A, prong 2, of the 2019 Guidance. STEP 2B: We next inquire whether claim 1’s additional elements are well understood, routine, and conventional. See 2019 Guidance, 84 Fed. Reg. at 56; MPEP § 2106.05(d). The only additional elements recited in claim 1, beyond the underlying abstract ideas, are “a receiving device” (limitations [i] and [ii]) and “a transmitting device” (limitation [iii]). We agree with the Examiner that Appellants’ Specification indicates that “the additional elements are merely generic computer elements performing the limitations in Appeal 2017-009396 Application 14/269,685 11 a conventional and routine manner.” Final Act. 4 (citing e.g., Spec. ¶ 41). Appellants’ Specification acknowledges, for example, A person having ordinary skill in the art may appreciate that embodiments of the disclosed subject matter can be practiced with various computer system configurations, including multi- core multiprocessor systems, minicomputers, mainframe computers, computers linked or clustered with distributed functions, as well as pervasive or miniature computers that may be embedded into virtually any device. Spec. ¶ 83. Conclusion For the foregoing reasons, Appellants have not demonstrated that the Examiner erred in determining that claim 1 is directed to patent-ineligible subject matter. Accordingly, we sustain the rejection under 35 U.S.C. § 101 of claim 1 and also of claims 2–30, which Appellants do not argue separately. See Appeal Br. 17–18. THE REJECTION UNDER 35 U.S.C. § 102(A) Claims 1–6 and 16–21 The Examiner finds that Shastry discloses all of the limitations of, for example, independent claim 1. Final Act. 6–7 (citing Shastry ¶¶ 65, 79, 80, 107, 338; FIG. 1C). In so doing, the Examiner interprets Shastry’s hypertext transfer protocol (HTTP(S)) POST message, which includes Extensible Markup Language (XML)-formatted data about a user, as corresponding to a data file. Id. at 6; see also Ans. 5. Appellants argue that none of the various paragraphs of Shastry upon which the Examiner relies discloses “that such data may be included in a data file that is received, let alone that the data file also originates from a Appeal 2017-009396 Application 14/269,685 12 computing device, as recited in the present claims. Appeal Br. 19. Appellants assert that the Examiner equates Shastry’s consumer activity message 215 with the claimed data file. Id. Appellants argue that Shastry’s message 215 is provided via an HTTP POST message, and that persons of ordinary skill would have understood that “an HTTP POST message is data that is submitted through the web page itself in a form submission, which is done directly through the HTTP protocol and not done via a data file, as recited in the appealed claims.” Id. (citing Shastry ¶ 72). According to Appellants, then, Shastry not only fails to anticipate the receipt of a data file, but appears to teach against the use of a data file. Id. Appellants’ arguments are persuasive. The Examiner reiterates in the Examiner’s Answer that she “is using the ‘XML formatted data’ of paragraph 0072 to teach the data file recited in the claims.” Ans. 5. The Examiner also explains that when the claim term “data file” is interpreted according to the broadest reasonable interpretation, the claim term reads on Shastry’s “XML formatted data (which [was] known to one of ordinary skill in the art as a file extension for XML file format) sent in the form of a consumer message.” Id. The Examiner’s explanation effectively constitutes an admission that Shastry does not expressly disclose receipt of a data file. The Examiner’s explanation also effectively constitutes the taking of Official Notice that disclosure of XML-formatted data received in an HTTP(S) POST message inherently or synonymously constitutes disclosure of receipt of a data file, as claimed. However, the Examiner provides insufficient evidence to support this finding. Accordingly, we do not sustain the rejection of independent Appeal 2017-009396 Application 14/269,685 13 claims 1 and 16, which recite receipt of a data file, or of claims 2–6 and 17– 21, which depend from these claims. Claims 7–11 and 22–26 Independent claim 7 reads as follows with emphasis added to the disputed limitation: 7. A method for identifying purchase data for advertisement suppression, comprising: storing, in an account database, a plurality of account profiles, wherein each account profile includes data related to a payment account including at least an account identifier associated with the related payment account and a computer identifier associated with a computing device; receiving, by a receiving device, transaction data for a payment transaction, wherein the transaction data includes at least purchase data and an account identification; identifying, in the account database, a specific account profile where the included account identifier corresponds to the account identification included in the received transaction data; and transmitting, by a transmitting device, at least the purchase data included in the received transaction data and the computer identifier included in the identified specific account profile for suppression of advertisements distributed to the computing device based on at least the purchase data. The Examiner explains how Shastry teaches the last, “transmitting” limitation, as follows: transmitting, by a transmitting device (“Payment network server” in Paragraphs 0107 and 0205), at least the purchase data included in the received transaction data and the computer identifier (“hardware ID” and “IP address”, Paragraph 0077) included in the identified specific account profile for suppression of advertisements distributed to the Appeal 2017-009396 Application 14/269,685 14 computing device based on at least the purchase data (Paragraphs 0064, 0065, and 0080 also see Figure 1C element 134 and the purchase request XLM Formatted data in Paragraph 0077)[.] Final Act. 10. Appellants argue that Shastry fails to disclose the claim language “transmitting, by a transmitting device, at least the purchase data included in the received transaction data and the computer identifier,” as claimed. Appeal Br. 21. More specifically, Appellants argue that although Shastry uses purchase confirmations that were received at the Ad-Track server to update a consumer’s purchasing history internally within the Ad-Track server, “Shastry fails to disclose or even suggest that the purchase confirmations or any data included therein is transmitted from the Ad-Track server.” Appeal Br. 21. Appellants further argue that “Shastry does not further disclose or suggest that the data is accompanied by a computer identifier included in an identified specific account profile” that is transmitted from the Ad-Track server, as claimed. Id. Appellants’ arguments are persuasive. The rejection sets forth where Shastry discloses all of the elements individually in isolation. Final Act. 9– 10; Ans. 5–6. But the rejection does not explain how Shastry discloses all of the elements in an ordered combination when claim 7 is read as a whole. For example, the Examiner relies on the Ad-Track server as being the transmitting device. Ans. 6 (“As discussed in paragraph 0065 of Shastry, the Ad-Track se[r]ver feeds information to the ad network server (element 180)[,] which provides advertisements to the consumer”). But then the Examiner relies on paragraphs 72 and 77 of Shastry for teaching the claimed computer identifier. Id. However, paragraph 72 of Shastry discloses a Appeal 2017-009396 Application 14/269,685 15 consumer device providing a message to the Ad-Track server—not the Ad- Track server transmitting data elsewhere. Shastry ¶ 72. Similarly, paragraph 77 of Shastry discloses a consumer device providing a purchase- request message to a merchant—not the Ad-track server transmitting the message. Id. at 77. For the forgoing reasons, the Examiner has not demonstrated that Shastry discloses all of the limitations of claim 7, as an ordered combination. We therefore do not sustain the anticipation rejection of claim 7 or of independent claims 12, 22, and 27, which recite similar limitations. We, likewise, do not sustain the anticipation rejection of claims 8–11, 13–15, 23– 26, and 28–30, which depend from these four independent claims. CONCLUSIONS Appellants have not shown that the Examiner erred in rejecting claims 1–30 under 35 U.S.C. § 101 as being directed to patent-ineligible subject matter. Appellants have shown that the Examiner erred in rejecting claims 1–30 under 35 U.S.C. § 102.3 3 Our review is limited to answering whether the Examiner established that Shastry anticipates the appealed claims. We do not address whether Shastry may render any of the claims obvious. See Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential) (The Board reviews appealed rejections for error based upon the issues identified by Appellants, and in light of the arguments and evidence produced thereon). Appeal 2017-009396 Application 14/269,685 16 DECISION The Examiner’s decision rejecting claims 1–30 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)(1). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED Copy with citationCopy as parenthetical citation