Eui Chung et al.Download PDFPatent Trials and Appeals BoardSep 4, 201914104070 - (D) (P.T.A.B. Sep. 4, 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. 14/104,070 12/12/2013 Eui Chung 27706US01 6185 23446 7590 09/04/2019 MCANDREWS HELD & MALLOY, LTD 500 WEST MADISON STREET SUITE 3400 CHICAGO, IL 60661 EXAMINER CHNG, JOY POH AI ART UNIT PAPER NUMBER 3686 NOTIFICATION DATE DELIVERY MODE 09/04/2019 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): mhmpto@mcandrews-ip.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte EUI CHUNG, BHARATH SRIDHARAN, and SEYED ALIREZA FOROUZAN EBRAHIMI ____________ Appeal 2018-005312 Application 14/104,0701 Technology Center 3600 ____________ Before JASON V. MORGAN, DANIEL N. FISHMAN, and NABEEL U. KHAN, Administrative Patent Judges. KHAN, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from the Final Rejection of claims 1, 3, 4, 7, 12, 13, and 15–27. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 Appellants identify Sears Brands, L.L.C., as the real party in interest. App. Br. 2. Appeal 2018-005312 Application 14/104,070 2 BACKGROUND THE INVENTION According to Appellants, their invention “relate[s] to electronic commerce (e-commerce), and more particularly, to providing information for products sold in an e-commerce environment.” Spec. ¶ 1. Appellants explain that for any given product or service, a vast amount of information may be found on the Internet, in the form of in-depth product reviews, product commentaries, product comparisons, purchasing advice, and product demonstrations. Spec. ¶ 3. However, as the Specification explains, “many customers may not have the time, desire, and/or ability to find the most relevant information for products of interest.” Id. Thus, the Specification explains that “an e-commerce website, that is able to readily provide such information, may provide a service that may both drive sales as well as increase customer loyalty.” Id. Exemplary independent claim 1 is reproduced below. 1. A computer-implemented method, comprising: obtaining content from one or more content providers via a computer network; selecting phrases from the obtained content based on frequency scores for the phrases; identifying a product from a product catalog of an electronic database based on the phrases selected from the obtained content; associating the obtained content with the identified product by updating the electronic database to include, for the identified product, one or more references to the obtained content; and in response to a request for the product listing of the identified product, retrieving the product listing and associated Appeal 2018-005312 Application 14/104,070 3 one or more references for the identified product from the electronic database and presenting the retrieved product listing with the retrieved one or more references. REJECTION Claims 1, 3, 4, 7, 12, 13, and 15–27 stand rejected under 35 U.S.C. § 101. Final Act. 2–5 DISCUSSION LEGAL PRINCIPLES 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. Pty. Ltd. 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 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 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 Appeal 2018-005312 Application 14/104,070 4 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, 69 (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 187; 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 Appeal 2018-005312 Application 14/104,070 5 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. (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. The PTO recently published revised guidance on the application of § 101. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Guidance”). Under the Guidance, 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); and (2) additional elements that integrate the judicial exception into a practical application (see MPEP §§ 2106.05(a)–(c), (e)–(h)). 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 (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 Guidance. GUIDANCE STEP 1 Independent claims 1, 7, and 13 are directed to a “method,” a Appeal 2018-005312 Application 14/104,070 6 “non-transitory computer readable medium,” and a “computing device,” respectively. As such, we find the pending claims are directed to statutory categories, such as a process and machine. GUIDANCE STEP 2A – WHETHER THE CLAIMS ARE DIRECTED TO A JUDICIAL EXCEPTION The Examiner finds “[c]laims 1, 7 and 13 recites, in part, a series of steps which includes obtaining data (i.e. content), selecting data (i.e. phrases), identifying data (i.e. product), associating data (i.e. content), updating data, retrieving data and presenting data (i.e. product listing).” Final Act. 2. The Examiner finds these steps are directed to an abstract idea under the Federal Circuit’s analysis in Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016). Final Act. 2. Appellants distinguish their claims from those in Electric Power Group, arguing that the claims are directed “to a particular technical solution to” (App. Br. 29) a technical problem and, therefore, include meaningful recitations that go beyond merely collecting data, performing a conventional analysis of the data, and presenting the conventional analysis of the data. App. Br. 28–29. Prong 1 of Step 2A Under the first prong of step 2A of the Guidance, we determine if the claims recite an abstract idea. Save for the recitation of an “electronic database,” we find that nearly every limitation of claim 1 recites mental processes. For example, “obtaining content form one or more content providers,” is a step directed at gathering data, which may be performed mentally. Elec. Power Group, 830 F.3d at 1355 (“[M]erely selecting information, by content or source, for collection, analysis, and display does nothing significant to differentiate a process from ordinary mental processes, Appeal 2018-005312 Application 14/104,070 7 whose implicit exclusion from § 101 undergirds the information-based category of abstract ideas”); Content Extraction and Transmission LLC v. Wells Fargo Bank, N.A., 776 F.3d 1343, 1347 (Fed. Cir. 2014) (“the claims of the asserted patents are drawn to the abstract idea of 1) collecting data, 2) recognizing certain data within the collected data set, and 3) storing that recognized data in a memory. The concept of data collection, recognition, and storage is undisputedly well-known. Indeed, humans have always performed these functions”). “[S]electing phrases from the obtained content based on frequency scores for the phrases,” and “identifying a product from a product catalog of an electronic database based on the phrases selected from the obtained content,” are limitations that are directed to recognizing data within a collection and also to filtering content. See Bascom Glob. Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1348 (Fed. Cir. 2016) (“filtering content is an abstract idea because it is a longstanding, well-known method of organizing human behavior, similar to concepts previously found to be abstract); see also Content Extraction, 776 F.3d at 1347. “[A]ssociating the obtained content with the identified product by updating the electronic database to include, for the identified product, one or more references to the obtained content” is a step that can be performed mentally or with pen and paper by recording an association between the content and references to that content. Finally, “retrieving the product listing and associated one or more references for the identified product from the electronic database and presenting the retrieved product listing with the retrieved one or more references” are steps involving data retrieval and data presentation. Although presentation of data may not be done purely Appeal 2018-005312 Application 14/104,070 8 mentally, such a step “does nothing significant to differentiate a process from ordinary mental processes.” Elec. Power Group, 830 F.3d at 1355. Mental processes is a category of abstract ideas identified in the Guidance and thus, under prong one of the step 2A, we find the claims recite an abstract idea. Guidance, 84 Fed. Reg. at 52. Prong 2 of Step 2A Next we determine whether the claims recite any additional limitations beyond the abstract idea that individually or as a combined whole integrate the abstract idea into a practical application. Appellants argue “[e]ach of claims 1, 3, 4, 7, 12, 13, and 15–27 set forth a specific technical solution to this problem of how deal with vast amounts of information. To, each of claims 1, 3, 4, 7, 12, 13, and 17–27 set forth a specific process for processing information obtained from various content providers via a computer network and directing persons to information of the content providers that is relevant to an identified product.” App. Br. 18. Appellants argue that the claims offer a “particular technical solution to a computer- centric or Internet-centric problem.” Id. Appellants also identify limitations from the dependent claims and argue that these limitations “provide[] further technical details” (App. Br. 24) or are directed to a “technical means of solving the problem” (App. Br. 24). App. Br. 24–26. We are unpersuaded by Appellants’ arguments. Under prong 2 of step 2A, we look to see, amongst other things, if the claims include any additional elements that reflect an improvement in the functioning of a computer or to another technological field. Guidance, 84 Fed. Reg. at Appeal 2018-005312 Application 14/104,070 9 54–55. Analyzing the claims’ limitations as a whole and individually, we do not find additional limitations, beyond the claimed abstract idea, that improve the functioning of a computer or another technological field. As we explained above, nearly every limitation of claim 1 recites a step that can be performed mentally. “[P]rocessing information obtained from various content providers” and “directing persons to information of the content providers” (App. Br. 18), which Appellants argue provide a technical solution to a technical problem, are both steps that can be performed in the human mind and through communication to other persons. Thus, we do not find any additional limitations, beyond those that recite the abstract idea, that reflect an improvement to the functioning of a computer or to another technical field. We disagree with Appellants that the dependent claims provide additional technical details sufficient to integrate the claimed mental processes into a practical application of those mental processes. For example, claim 3 explains how frequency scores are generated “based on weighted term frequency of the phrases.” This step, although providing more detail about the limitations of claim 1, still may be performed mentally or though calculations. Removing blacklisted phrases (claim 4) may also be performed as a mental process. Reference to “(RSS) feeds” (claims 19, 22, 25) in certain dependent claims generally links the claims to a technological environment but does not improve the functioning of that environment or another technical field. Limitations reciting “crawling content served by” (claims 20, 23, and 26) the content providers can be performed mentally by searching through content. Similarly, “polling” (claims 21, 24, and 27) is a technique that can be performed by a human as well as by a computer. The Appeal 2018-005312 Application 14/104,070 10 dependent claims referencing “natural language processing” (claims 7, 12, 17, and 18) are, of course, referencing a process that naturally occurs in the human mind. Moreover, even taking these additional details in the dependent claims into account, we find none of them improve the functioning of the computer itself, or of another technical field. GUIDANCE STEP 2B – WHETHER THE CLAIMS PROVIDE AN INVENTIVE CONCEPT In our analysis under step 2B, we look to see if the claims add limitations beyond the judicial exception that are not “well-understood, routine, conventional” in the field (see MPEP § 2106.05(d)). Appellants argue the claims “set forth an inventive process that, when taken as a whole, sets forth an unconventional process of analyzing content obtained from content providers and associating such content to identified products.” App. Br. 29. We find Appellants’ arguments to be unpersuasive. As we explained above, nearly each of the limitations of the claims recite steps that can be performed mentally. The remaining recitation of a “computer network” and “electronic database” are not sufficient to provide an inventive concept to the subject matter of the claims. The Specification describes the computer network as including “wireless and/or wired LAN networks, cellular networks, and the Internet.” Spec. ¶ 14. The computing devices that access the network are described as including “a desktop, a laptop, a tablet, a smart phone, and/or some other type of computing device which enables a user to communicate with the e-commerce system.” Spec. ¶ 14. The “electronic database” is similarly described as a standard component of the e-commerce system “configured to store data.” Spec. ¶ 15. Thus, the “computer Appeal 2018-005312 Application 14/104,070 11 network” and “electronic database” are “well-understood, routine, conventional” elements of the claims. We, therefore, do not find the claims provide an inventive concept that is significantly more than the recited abstract idea. REMAINING ARGUMENTS Appellants argue “that claims 1, 3, 4, 7, 12, 13, and 15-27 are sufficiently narrow to avoid preempting an entire field of innovation and are thus directed to significantly more than the abstract idea itself.” App. Br. 22. We are unpersuaded by Appellants’ argument. “While preemption may signal patent ineligible subject matter, the absence of complete preemption does not demonstrate patent eligibility.” Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015). Moreover, “[w]here 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.” Id.; see also OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362–63 (Fed. Cir. 2015), cert. denied, 136 S. Ct. 701 (2015). DECISION The Examiner’s rejection of claims 1, 3, 4, 7, 12, 13, and 15–27 is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended. See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED Copy with citationCopy as parenthetical citation