Ex Parte Aydin et al

Patent Trial and Appeal BoardJan 24, 2019

14084903 (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. Â§ 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. Â§ 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. Â§ 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. Â§ 101. However, the Supreme Court has long interpreted 35 U.S.C. Â§ 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. 2 Appeal2017-010858 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 3 Appeal2017-010858 Application 14/084,903 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 Â§ 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: 4 Appeal2017-010858 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 Â§ 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 Â§ 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 5 Appeal2017-010858 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 6 Appeal2017-010858 Application 14/084,903 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. Â§ 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). 7 Appeal2017-010858 Application 14/084,903 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 Â§ 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 8 Appeal2017-010858 Application 14/084,903 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 9 Appeal2017-010858 Application 14/084,903 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."). 10 Appeal2017-010858 Application 14/084,903 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. Â§ 1.136(a). AFFIRMED 11