Ex Parte Benveniste et al

Patent Trial and Appeal Board

Mar 16, 2018

13926087 (P.T.A.B. Mar. 16, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/926,087 06/25/2013 Michael H. Benveniste
112978 7590 03/20/2018
Cuenot, Forsythe & Kim, LLC
20283 State Road 7, Suite 300
Boca Raton, FL 33498
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.
CAM920115012US2_8150-0396 1561
EXAMINER
SORKOWITZ, DANIEL M
ART UNIT PAPER NUMBER
3681
NOTIFICATION DATE DELIVERY MODE
03/20/2018 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):
ibmptomail@iplawpro.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex Parte MICHAEL H. BENVENISTE, DAVID F. CHEUNG,
RUBY L. KENNEDY, YUCHUN LEE, and PATRICK MARTIN
Appeal 2016-003381
Application 13/926,087
Technology Center 3600
Before MURRIEL E. CRAWFORD, MICHAEL W. KIM, and
BETH Z. SHAW, Administrative Patent Judges.
SHAW, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellants2 seek our review under 35 U.S.C. § 134(a) of the
Examiner's Final Rejection of claims 34-53, which represent all the pending
claims. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 Throughout this Decision we have considered the Appeal Brief filed April
9, 2015 ("App. Br."), Reply Br. filed February 4, 2016, the Examiner's
Answer mailed December 4, 2015 ("Ans.") and the Final Office Action
mailed November 13, 2014 ("Final Act.").
2 Appellants identify IBM Corporation as the real party in interest. App. Br.
1.
Appeal 2016-003381
Application 13/926,087
INVENTION
Appellants' invention is directed to a method for producing a contact
history for a marketing campaign. Spec., Abstract.
Claim 34 is representative and reproduced below:
34. A computer-implemented method for producing a contact
history for a marketing campaign, comprising:
creating a first link between a promotion version history
table and a treatment history table;
creating a second link between the treatment history table
and a contact history table; and
generating the contact history using the promotion
version history table, the treatment history table, and the contact
history table, wherein
the promotion version history table is a record of
promotion attributes values for each promotion version of the
marketing campaign, and
the treatment history table is a record of promotion
instances in the marketing campaign, and
the contact history table is a record of contact entities in a
particular group.
REJECTIONS
The Examiner rejected claims 34-53 under 35 U.S.C. § 101 as
directed to non-statutory subject matter. Final Act. 2.
The Examiner rejected claims 34-53 under 35 U.S.C. § 103(a) as
being unpatentable over Reed (US 2004/0103017 Al; published May 27,
2004 ). Final Act. 3-11.
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Application 13/926,087
CONTENTIONS AND ANALYSIS
We have reviewed Appellants' arguments in the Briefs, the
Examiner's rejection, and the Examiner's response to Appellants'
arguments. Appellants do not proffer sufficient argument or evidence for us
to find error in the Examiner's findings. For at least the reasons discussed
below, we agree with and adopt the Examiner's findings and conclusions in
the Final Action and Answer.
Section 101
The Examiner determines claims 34-53 are directed to the abstract
idea of providing and tracking advertising, a fundamental economic practice.
Final Act. 3; Ans. 9. The Examiner also determines additional elements
recited in these claims do not amount to significantly more than the abstract
idea itself. Id.
Appellants present several arguments against the 35 U.S.C. § 101
rejection. App. Br. 9-14; Reply Br. 2-5. Appellants contend the claims are
not directed to an abstract idea and that the claims amount to significantly
more than an abstract idea. Id.
We are unpersuaded by Appellants' arguments. The Supreme Court
has long held that "[l]aws of nature, natural phenomena, and abstract ideas
are not patentable." Alice Corp. Pty. Ltd. v. CLS Bankint'l, 134 S. Ct. 2347,
2354 (2014) (quoting Assoc.for Molecular Pathology v. Myriad Genetics,
Inc., 569 U.S. 576, 589 (2013)). The "'abstract ideas' category embodies
'the longstanding rule that '[a]n idea of itself, is not patentable."' Id. at 2355
(quoting Gottschalkv. Benson, 409 U.S. 63, 67 (1972)).
In Alice, the Supreme Court sets forth an analytical "framework for
distinguishing patents that claim laws of nature, natural phenomena, and
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Application 13/926,087
abstract ideas from those that claim patent-eligible applications of those
concepts." Id. at 2355 (citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75-78 (2012)). The first step in the analysis is to
"determine whether the claims at issue are directed to one of those patent-
ineligible concepts," such as an abstract idea. Id.
If the claims are directed to a patent-ineligible concept, the second
step in the analysis is to consider the elements of the claims "individually
and 'as an ordered combination"' to determine whether the additional
elements [that] "'transform the nature of the claim' into a patent-eligible
application." Id. (quoting Mayo, 566 U.S. at 77-79). In other words, the
second step is to "search for an 'inventive concept'-i.e., an element or
combination of elements that is 'sufficient to ensure that the patent in
practice amounts to significantly more than a patent upon the [ineligible
concept] itself."' Id. (alteration in original) (quoting Mayo, 566 U.S. at 77-
78). The prohibition against patenting an abstract idea "'cannot be
circumvented by attempting to limit the use of the formula to a particular
technological environment' or adding 'insignificant postsolution activity."'
Bilski v. Kappas, 561 U.S. 593, 610-11 (2010).
Addressing the first step of the Alice inquiry, we agree that
Appellants' claims are directed to an abstract idea, as explained by the
Examiner. Ans. 9. The steps recited in Appellants' claims are abstract
processes of providing and tracking advertising data. Cf Elec. Power Grp.
LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016) ("collecting
information, analyzing it, and displaying certain results of the collection and
analysis" is abstract); In re Salwan, Appeal No. 2016-2079, 2017 WL
957239 at *3 (Fed. Cir. Mar. 13, 2017) (affirming the rejection under§ 101
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Application 13/926,087
of claims directed to "storing, communicating, transferring, and reporting
patient health information," noting that "while these concepts may be
directed to practical concepts, they are fundamental economic and
conventional business practices"); Cyberfone Systems, LLC v. CNN
Interactive Grp, Inc., 558 F. App'x 988, 992 (Fed. Cir. 2014)
(nonprecedential) ("using categories to organize, store, and transmit
information is well-established"); Apple, Inc. v. Ameranth, 842 F.3d 1229,
1241 (Fed. Cir. 2016) ("ability to generate menus with certain features" held
abstract). Additionally, the claims are not directed to a specific
improvement in the way computers operate. Cf Enfzsh, LLC v. Microsoft
Corp., 822 F.3d 1327, 1335-36 (Fed. Cir. 2016).
Turning to the second step of the Alice inquiry, the limitations in
Appellants' claims do not add anything "significantly more" to transform
into a patent-eligible application the abstract concept of providing and
tracking advertising data. Alice, 134 S. Ct. at 2357.
The specific details of the claims are not "significantly more" than the
abstract idea. These are ordinary steps in data analysis and are recited in an
ordinary order. Limiting an abstract concept of tracking data to a general
purpose computer having generic components, such as the "computer-
implemented method" recited in Appellants' claim 34, does not make the
abstract concept patent-eligible under 35 U.S.C. § 101. See also Spec.
37:29-31 ("Processors suitable for the execution of a computer program
include, by way of example, both general and special purpose
microprocessors, and any one or more processors of any kind of digital
computer.").
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As recognized by the Supreme Court, "the mere recitation of a generic
computer cannot transform a patent-ineligible abstract idea into a patent-
eligible invention." Alice, 134 S. Ct. at 2358; see id. at 2359 (concluding
claims "simply instruct[ing] the practitioner to implement the abstract idea
of intermediated settlement on a generic computer" are not patent eligible).
Because Appellants' claims are directed to a patent-ineligible abstract
concept and do not recite something "significantly more" under the second
prong of the Alice analysis, we sustain the Examiner's rejection of these
claims under 35 U.S.C. § 101 as being directed to patent-ineligible subject
matter in light of Alice and its progeny.
For these reasons, and for the additional reasons stated in the Final
Rejection and Answer, we sustain the 35 U.S.C. § 101 rejection of claims
34-53.
Section 103 Rejection
We do not concur with Appellants' conclusion that the Examiner
erred in rejecting claims 34-53 under 35 U.S.C. § 103 as unpatentable over
Reed. Appellants argue the Examiner has not identified which portions of
Reed map to the claimed "treatment history table" and "promotion version
history table." App. Br. 16. Appellants also argue the Examiner erred in
concluding it would have been obvious to one skilled in the art to create a
link between the promotion version history table and the treatment history
table. Id. at 16-17.
The Examiner finds paragraph 3 8 of Reed teaches the promotion
version history table and the promotion treatment table. Final Act. 4-5; Ans.
11. We agree because the Examiner maps Reed's "promotions offered to a
customer", which are stored in the contact history of a customer analytic
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record (CAR), to the claimed promotion version history table. Id. (citing
Reed iJ 38). We also agree with the Examiner's mapping of Reed's contact
history and promotions redeemed by the customer (a record of promotion
instances in the marketing campaign) to the claimed "treatment history
table." Id. The Examiner explains that it would have been obvious to one
skilled in the art, based on Reed's explanation of data sources and linking
fields and records in a database management system (Reed iii! 3 7, 4 7) to link
the promotion version history table and the treatment history table. Final
Act. 5; Ans. 11-12. We agree.
Appellants argue in the Reply Brief that Reed's paragraph 38 does not
explicitly teach that "versions of each advertisement is tracked." Reply Br.
6. However, this argument is not commensurate in scope with claim 34,
which does not recite this limitation, and we are therefore not persuaded by
this argument. Appellants also argue the Examiner relies on a single feature
to teach two different and distinct claimed elements. Id. We are not
persuaded by this argument because the Examiner does not rely on a single
feature to teach two elements. Rather, as described above, the Examiner
maps the features of Reed to the claimed elements.
Accordingly, we sustain the Examiner's rejection of claims 34-53
under 35 U.S.C. § 103 as unpatentable over Reed.
CONCLUSION
We affirm the rejections of claims 34-53.
DECISION
The decision of the Examiner to reject claims 34-53 is affirmed.
No time period for taking any subsequent action in connection with
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Application 13/926,087
this appeal may be extended under 37 C.F.R. § l .136(a)(l )(iv).
AFFIRMED
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