Ex Parte Aydin et al

Patent Trials and Appeals Board

Jan 24, 2019

14084903 - (D) (P.T.A.B. Jan. 24, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/084,903 11/20/2013
23446 7590 01/28/2019
MCANDREWS HELD & MALLOY, LTD
500 WEST MADISON STREET
SUITE 3400
CHICAGO, IL 60661
FIRST NAMED INVENTOR
Burcu Aydin
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.
27710US01 4155
EXAMINER
JEANTY, ROMAIN
ART UNIT PAPER NUMBER
3623
NOTIFICATION DATE DELIVERY MODE
01/28/2019 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 BURCU AYDIN and MICHAEL TAMIR
Appeal2017-010858
Application 14/084,903
Technology Center 3600
Before JEAN R. HOMERE, ADAM J. PYONIN,
and DAVID J. CUTITTA II, Administrative Patent Judges.
HOMERE, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1--4 and 6-19, which constitute all claims pending in this
application. 1 App. Br. 1. Claim 5 has been canceled. Claims App'x. We
have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 Appellants identify the real party in interest as Sears Brands, L.L.C. App.
Br. 2.
Appeal2017-010858
Application 14/084,903
Introduction
According to Appellants, the claimed subject matter relates to an
electronic commerce (e-commerce) website (30) including a classifier (33)
for clustering customers (20) exhibiting similar purchasing habits (3 8) and
demographic data (39) so as to provide tailored services (35) to each
customer (20) based on a derived generalization associated with the cluster
to which the customer (20) is assigned. Spec. ,r,r 1, 20, 22-24, Fig. 1.
Representative Claim
Independent claim 1 is representative, and reads as follows:
1. A computer-implemented method, comprising:
iteratively splitting a plurality of customers into a
plurality of clusters based on purchase history data and
demographic data for the plurality of customers, wherein each
iteration comprises selecting a cluster of customers and splitting
the selected cluster until a stopping rule is satisfied; and
tailoring services provided to a customer based on a
cluster from the plurality of clusters in which the customer
resides.
Rejection on Appeal
Claims 1--4 and 6-19 stand rejected under 35 U.S.C. § 101 as being
directed to patent-ineligible material. Final Act. 5-9.
ANALYSIS 2
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
2 Rather than reiterate all the arguments of Appellants and all the Examiner's
findings and conclusions, we refer to the Appeal Brief (filed February 22,
2017) ("App. Br."), the Reply Brief (filed August 18, 2017) ("Reply Br."),
the Answer (mailed June 19, 2017) ("Ans."), and the Final Office Action
(mailed September 23, 2016) ("Final Act.") for the respective details.
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Application 14/084,903
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
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. Kappas, 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 (Gottschalkv. 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, 192
( 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 (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
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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 tum 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. "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.
The PTO recently published revised guidance on the application of
§ 101. USPTO's January 7, 2019 Memorandum, 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 ("Memorandum").
Under that guidance, the office first looks to whether the claim recites:
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Application 14/084,903
(1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing
human interactions such as a fundamental economic practice, or
mental processes); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.0S(a}-(c), (e}-(h)).
Only if a claim (1) recites a judicial exception and (2) does not integrate that
exception into a practical application, does the office then look to whether
the claim:
(3) adds a specific limitation beyond the judicial exception that are not
"well-understood, routine, conventional" in the field (see MPEP
§ 2106.0S(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.
Alice/Mayo Analysis, Step I (Abstract Idea)
Appellants do not dispute the Examiner's determination that claims 1-
4 and 6-19 are directed to the abstract idea of "classifying or grouping
customers." App. Br. 10-11; Reply Br. 4. According to Appellants, to the
extent the claims are directed to an abstract idea, they also involve a
particular solution, a practical embodiment that implements how to analyze
customer data to tailor services to customers based on such analysis. App.
Br. 13-15.
This argument is not persuasive. As an initial matter, we note the
method of independent claim 1 recites, inter alia, "tailoring services
provided to a customer based on a cluster from the plurality of clusters in
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Application 14/084,903
which the customer resides." Appellants' Specification indicates that
tailoring services to customers based on identified clusters of customers'
purchasing habits pertains to providing targeted advertisements to customers
based on clusters derived from similar purchasing habits of observed
customers. Spec. ,r 23. Accordingly, the claimed recitation is directed to a
method of organizing human activities, a judicial exception involving
commercial interaction in an ecommerce environment, wherein a business
owner markets targeted advertisements to a customer based on observed
purchasing habits of the customer as assigned to a relevant one of a plurality
of clusters. Further, the claim does not integrate the noted judicial exception
into a practical application. In particular, the claim does not recite an
additional element reflecting an improvement in the functioning of a
computer, or an improvement to other technology or technical field. See
DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1258-59 (Fed. Cir.
2014). Nor does the claim recite an additional element that implements the
abstract idea with a particular machine or manufacture that is integral to the
claim. Instead, the claim limitations only recite additional elements that add
insignificant extra-solution activity to the judicial exception. See
CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1375 (Fed. Cir.
2011 ). Our reviewing court has consistently held that mere characterizations
of human activities within the stream of commerce are not patent eligible.
See, e.g., Elec. Power Grp. v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir.
2016) (claims directed to collection, manipulation, and display of data);
Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363,
1370 (Fed. Cir. 2015) (customizing information and presenting it to users
based on particular characteristics). Prior to the Internet, such activities
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were widely practiced, and became computerized with the assistance of
human administrators to facilitate the processing of claim submissions. See
OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1364 (Fed. Cir. 2015).
Alice/Mayo Analysis, Step II (Significantly More than Abstract Idea)
Appellants argue that the claims recite significantly more than the
abstract idea of "classifying or grouping customers." App. Br. 10-11. In
particular, Appellants argue that the claims are sufficiently narrow to avoid
preempting the entire field of "classifying or grouping customers" thereby
addressing a particular solution to a specific problem, as opposed to
precluding all other solutions thereto. App. Br. 11-15 (citing Virginia
Innovation, 3 McR0, 4 Bascom5); Reply Br. 1-3. Further, Appellants argue
that the recitation of splitting a plurality of customers into clusters until a
stop is satisfied renders the claimed process inventive. Reply Br. 4.
These arguments are not persuasive. Appellants' arguments asserting
that the claims do not block others from using the abstraction do not
persuade us that the claims are directed to patent eligible material. Pre-
emption is not a separate test.
To be clear, the proper focus is not preemption per se, for
some measure of preemption is intrinsic in the statutory right
granted with every patent to exclude competitors, for a limited
time, from practicing the claimed invention. See 35 U.S.C.
§ 154. Rather, the animating concern is that claims should not
be coextensive with a natural law, natural phenomenon, or
3 Virginia Innovation Sciences, Inc. v. Amazon.com, Inc., 227 F. Supp. 3d
582 (E.D. Va. 2017).
4 McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314 (Fed.
Cir. 2016).
5 Bascom Glob. Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341
(Fed. Cir. 2016).
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abstract idea; a patent-eligible claim must include one or more
substantive limitations that, in the words of the Supreme Court,
add "significantly more" to the basic principle, with the result
that the claim covers significantly less. See Mayo[, 566 U.S. at
72-73]. Thus, broad claims do not necessarily raise § 101
preemption concerns, and seemingly narrower claims are not
necessarily exempt.
CLS Bankint'l v. Alice Corp. Pty. Ltd., 717 F.3d 1269, 1281 (Fed.
Cir. 2013) (Lourie, J., concurring), aff'd, 573 U.S. 208; see also Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015)
("While preemption may signal patent ineligible subject matter, the absence
of complete preemption does not demonstrate patent eligibility."). Because
we find the claimed subject matter covers patent-ineligible subject matter,
the pre-emption concern is necessarily addressed. "Where a patent's claims
are deemed only to disclose patent ineligible subject matter under the Mayo
framework, ... preemption concerns are fully addressed and made moot."
Ariosa Diagnostics, 788 F.3d at 1379.
Further, regarding Appellants' argument that the Examiner has not
considered whether all elements of the claims amount to significantly more
than the alleged abstract idea of organizing human activities, we find the
remaining claim elements only recite generic computer components that are
well-understood, routine, and conventional. See Alice, 573 U.S. at 217. In
particular, the cited claim elements, as a whole, do not amount to
significantly more than the abstract idea of tailoring advertisements to
customers based on assigned clusters derived from customers' purchasing
habits. Appellants are reminded that "the 'inventive concept' [under step
two of the Mayol Alice test] cannot be the abstract idea itself' and
"Berkheimer ... leave[ s] untouched the numerous cases from this court
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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). "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." BSG Tech LLC v. Buyseasons, Inc., 899
F.3d 1281, 1290 (Fed. Cir. 2018). We therefore agree with the Examiner
that the computer functions recited in the claims were in fact generic, and
are met by numerous case law establishing that using a generic computer to
expedite and automate processes traditionally performed manually or that
are otherwise abstract is a well-understood, routine, and conventional use of
such computers. Ans. 8; Spec. ,r,r 25-31; see, e.g., Intellectual Ventures I
LLCv. Symantec Corp., 838 F.3d 1307, 1321 (Fed. Cir. 2016) (utilizing an
intermediary computer to forward information); Bancorp Servs., L.L. C. v.
Sun Life Assurance Co., 687 F.3d 1266, 1278 (Fed. Cir. 2012) ("The
computer required by some of Bancorp' s claims is employed only for its
most basic function, the performance of repetitive calculations, and as such
does not impose meaningful limits on the scope of those claims.").
Appellants are further reminded that "relying on a computer to perform
routine tasks more quickly or more accurately is insufficient to render a
claim patent eligible." OIP Techs., 788 F.3d at 1363 (citing Alice, 573 U.S.
at 224 ("use of a computer to create electronic records, track multiple
transactions, and issue simultaneous instructions" is not an inventive
concept)). Therefore, the functions recited in claim 1 do not add any
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meaningful limitations beyond generally linking the abstract idea to the
particular technological environment. Id. 6
Additionally, we agree with the Examiner that the claimed subject
matter is not necessarily rooted in computer technology. Ans. 10. In
particular, we agree with the Examiner that although the claims recite a
solution for a computing system, they are unlike the claims found patent
eligible in DDR Holdings because they are directed to nothing more than the
performance of an idea from the pre-Internet era of tailoring advertisements
to customers based on assigned clusters derived from customers' purchasing
habits and demographic data, and not to any technological improvement in
the computer itself. Id.
Accordingly, we are not persuaded of error in the Examiner's
conclusion that claim 1 is directed to patent-ineligible subject matter.
Because Appellants reiterate for claims 2--4 and 6-19 substantially the
same arguments of claim 1 discussed above, claims 2--4 and 6-19 fall
together with claim 1.
6 Considerations for determining whether a claim with additional elements
amounts to "significantly more" than the judicial exception itself include
improvements to another technology or technical field (Alice, 573 U.S. at
225-26 (citing Diehr, 450 U.S. at 177-78)); adding a specific limitation
other than what is well-understood, routine, and conventional in the field, or
adding unconventional steps that confine the claim to a particular useful
application (Mayo, 566 U.S. at 82, 87); or other meaningful limitations
beyond generally linking the use of the judicial exception to a particular
technological environment (Alice, 573 U.S. at 226). See, e.g., Intellectual
Ventures I LLC, 792 F.3d at 1370 ("[M]erely adding computer functionality
to increase the speed or efficiency of the process does not confer patent
eligibility on an otherwise abstract idea.").
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DECISION
For the above reasons, we affirm the patent ineligibility rejection of
claims 1--4 and 6-19.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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