Ex Parte Ala-Pietila

Patent Trial and Appeal Board

May 12, 2016

12080356 (P.T.A.B. May. 12, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/080,356 04/02/2008
77970 7590
Polsinelli -- Apple Inc.
c/o Polsinelli PC
1000 Louisiana Street
Fifty-Third Floor
Houston, TX 77002
05/16/2016
FIRST NAMED INVENTOR
Pekka Ala-Pietila
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
20182.28.NPUSOO_pll544US1 3944
EXAMINER
VAN BRAMER, JOHN W
ART UNIT PAPER NUMBER
3622
NOTIFICATION DATE DELIVERY MODE
05/16/2016 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):
Apple@Polsinelli.com
cadocket@Polsinelli.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PEKKA ALA-PIETILLLA
Appeal2016-003448
Application 12/080,356
Technology Center 3600
Before BIBHU R. MOHANTY, CYNTHIA L. MURPHY, and SHEILA F.
McSHANE, Administrative Patent Judges.
MOHANTY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants seek our review under 35 U.S.C. § 134 of the final
rejection of claims 2-11, 13, 14, 17-28, 30, 31, 34--44, 46, 47, 50-63 and
90-93 which are all the claims pending in the application. We have
jurisdiction under 35 U.S.C. § 6(b).
SUMMARY OF THE DECISION
We AFFIRM.
Appeal2016-003448
Application 12/080,356
THE INVENTION
The Appellant's claimed invention is directed to the transmission of
messages to a recipient in a communications network (Spec. 1: 10-12).
Claim 90, reproduced below, is representative of the subject matter on
appeal.
90. A method comprising:
maintaining category data identifying one or more message
categories;
determining, by a computer processor, a total number of
viewing opportunities for a time period, wherein the time period is
made up of a plurality of distinct portions;
obtaining, based on a recipient message distribution preference,
a preferred percentage of messages from each of the one more
message categories to be transmitted to a first recipient within each of
the plurality of distinct portions of the time period;
allocating, by the computer processor, messages from the one
or more message categories to be transmitted to the first recipient at
viewing opportunities of each of the plurality of distinct portions of
the time period based at least in part on the recipient message
distribution preference of the first recipient and a message provider
preference, wherein a number of messages from the one or more
message categories allocated to be transmitted to the first
recipient varies between the distinct portions of the time period; and
creating, by the computer processor, a transmission schedule
according to the allocation for use in triggering the transmission of
message content to the first recipient.
THE REJECTIONS
The following rejections are before us for review:
1. Claims 2-11, 13-14, 17-28, 30-31, 34--44, 46-47, 50-63 and
90-93 are rejected under 35 U.S.C. § 112, first paragraph, for failure to
show possession of the claimed invention.
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Application 12/080,356
2. Claims 2-11, 13, 14, 17-28, 30-31, 34--44, 46, 47, 50-63 and
90-93 are rejected under 35 U.S.C. § 101 as being drawn to non-statutory
subject matter.
FINDINGS OF FACT
We have determined that the findings of fact in the Analysis section
below are supported at least by a preponderance of the evidence1.
ANALYSIS
Rejection under 35 U.S. C. § 112, first paragraph
The Examiner has determined that claim 90 does not meet the
requirements of 35 U.S.C. § 112, first paragraph, for failure to show
possession of the invention (Final Rej. 2, 3; Ans. 2-4). Specifically, the
Examiner has determined that the Specification fails to provide support for
the claim limitation for:
obtaining, based on a recipient message distribution preference, a
preferred percentage of messages from each of the one more message
categories to be transmitted to a first recipient within each of the
plurality of distinct portions of the time period;
(Final Rej. 2-3).
In contrast, the Appellant has argued that this rejection is improper
and that support for the cited claim limitation is shown in the Specification
1 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(explaining the general evidentiary standard for proceedings before the
Patent Office).
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Appeal2016-003448
Application 12/080,356
at paragraph 56, Fig. 3, table 5, page 3:28--4:2, page 7:5-9, page 11:6-10,
page 11:15, and page 14:18-15 (App. Br. 5-9).
We agree with the Appellants. Here, the Specification at page 14,
lines 8-15 and in Table 5 discloses that messages can be distributed on a
percentage basis in time periods (days of the week). It is also disclosed at
this portion that the rules can be specified using preference information
stored in the recipient database. For this reason, this rejection is not
sustained.
Re} ection under 3 5 U.S. C. § 101
The Appellant argues that the rejection of claim 90 under 35 U.S.C.
§ 101 is improper (App. Br. 10-16, Reply Br. 3-16).
In contrast, the Examiner has determined that this rejection of record
is proper (Final Rej. 3-5, Ans. 4---6).
We agree with the Examiner. Under 35 U.S.C. § 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. The Supreme Court, however,
has long interpreted § 101 to include an implicit exception: "laws of nature,
natural phenomena, and abstract ideas" are not patentable. See, e.g., Alice
Corp. Pty Ltd. v. CLS Bank Int'!, 134 S. Ct. 2347, 2354 (2014).
In judging whether claim 90 falls within the excluded category of
abstract ideas, we are guided in our analysis by the Supreme Court's two-
step framework, described in Mayo and Alice. Id. at 2355 (citing Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1296-97
(2012)). In accordance with that framework, we first determine whether the
claim is "directed to" a patent-ineligible abstract idea. If so, we then
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Appeal2016-003448
Application 12/080,356
consider the elements of the claim both individually and as "an ordered
combination" to determine assess whether the additional elements
"transform the nature of the claim" into a patent-eligible application of the
abstract idea. Id. This is a search for an "inventive concept" an element or
combination of elements sufficient to ensure that the claim amounts to
"significantly more" than the abstract idea itself. Id. The Court also stated
that "the mere recitation of a generic computer cannot transform a patent-
ineligible abstract idea into a patent-eligible invention". Id at 2358.
Here, claim 90 is directed to the abstract idea of determining when to
distribute messages in various categories based on a recipient preference and
creating a schedule for such. The processing of these steps and distribution
of the messages by a conventional computer system does not transform the
nature of the claim into patent-eligible subject matter. Here the use of the
computer processor in the claim does no more than simply instruct the
practitioner to implement the abstract idea over the Internet, using generic
computer components. For these reasons this rejection of claim 90 is
sustained. The Appellant has not provided specific arguments for the
remaining claims and the rejection of these claims is sustained for the same
reasons given above.
CONCLUSIONS OF LAW
We conclude that Appellant has shown that the Examiner erred in
rejecting the claims under 35 U.S.C. § 112, first paragraph, for failure to
show possession of the claimed invention as listed in the Rejections section
above.
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Appeal2016-003448
Application 12/080,356
We conclude that Appellant has not shown that the Examiner erred in
rejecting the claims under 35 U.S.C. § 101 as listed in the Rejections section
above.
DECISION
The Examiner's rejection of claims 2-11, 13, 14, 17-28, 30-31,
34--44, 46, 4 7, 50-63 and 90-93 is sustained.
AFFIRMED
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