Ex Parte Ehindero et al

Patent Trial and Appeal BoardAug 28, 2017

13455497 (P.T.A.B. Aug. 28, 2017)

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. 13/455,497 04/25/2012 Akintunde Ehindero DC-19194 4214 33438 7590 08/30/2017 TERRILE, CANNATTI, CHAMBERS & HOLLAND, LLP P.O. BOX 203518 AUSTIN, TX 78720 EXAMINER ROSS, SCOTT M ART UNIT PAPER NUMBER 3623 NOTIFICATION DATE DELIVERY MODE 08/30/2017 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): tmunoz @ tcchlaw. com kchambers@tcchlaw.com heather@tcchlaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte AKINTUNDE EHINDERO, RAJIV NARANG, and YINGCHI CHEN Appeal 2016-005211 Application 13/455,497 Technology Center 3600 Before JOSEPH L. DIXON, CARL L. SILVERMAN, and SCOTT B. HOWARD, Administrative Patent Judges. DIXON, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims 1—20. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. The claims are directed to a social targeting method in a marketing campaign. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A computer-implemented method for social targeting, comprising: Appeal 2016-005211 Application 13/455,497 processing, via a computer system, a first set of social media interaction data to generate a second set of social media interaction data containing a reference to an intent to purchase a product, the first set of social media interaction data associated with a first set of social media users and the second set of social media interaction data associated with a second set of set of social media users; processing, via the computer system, the second set of social media interaction data to generate a prioritization index; processing, via the computer system, a third set of social media interaction data with the prioritization index to generate a propensity-to-purchase value for individual users of a third set of social media users, the third set of social media interaction data associated with the third set of social media users; and performing, via the computer system, ranking operations to rank the third set of social media users according to their respective propensity-to-purchase value; and wherein the prioritization index is generated from a site visit index and a purchase index, the site visit index indicating a social media user activity with content related to a product line featured in a social marketing campaign. The prior art relied upon by the Examiner in rejecting the claims on REFERENCES appeal is: Kitts US 2002/0165755 A1 US 6,868,389 B1 Nov. 7, 2002 Mar. 15,2005 Oct. 9, 2007 May 6, 2010 Dec. 27, 2012 Wilkins et al. Blanchard et al. US 7,280,974 B2 Lukose et al. Pickton et al. US 2010/0114654 Al US 2012/0330720 Al 2 Appeal 2016-005211 Application 13/455,497 (Provisional App. filed June 21, 2011) REJECTIONS The Examiner made the following rejections: Claims 1—20 stand rejected under 35U.S.C. § 101 because the claimed invention is directed to non-statutory subject matter. Claims 1, 4, 7, 10, 13, 16, 19, and 20 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Lukose in view of Pickton. Claims 2, 8, and 14 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Lukose in view of Pickton in view of Wilkins. Claims 3,9, and 15 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Lukose in view Pickton in view of Kitts in view of Blanchard. Claims 5, 6, 11, 12, 17, and 18 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Lukose in view of Pickton in view of Kitts. ANALYSIS At the outset, we find Appellants’ arguments are directed to a claim limitation which was proposed for entry May 14, 2015, but was denied entry by the Examiner. Arguments which Appellants could have made, but elected not to make are waived. See 37 C.L.R. § 41.37(c)(l)(iv). 35 U.S.C. § 101 With respect to claims 1—20, Appellants argue the claims together. (App. Br. 3). We select independent claim 1 as the representative claim for the group and address Appellants’ arguments thereto. See 37 C.L.R. § 41.37(c)(l)(iv). 3 Appeal 2016-005211 Application 13/455,497 With respect to representative independent claim 1, Appellants generally argue: The claims of the present application recite significantly more than a mere abstract idea. More specifically, providing the rank of the third set of social media users as a propensity-to purchase output, to identify potential sales leads for the product from the third set of social media users as well as a prioritization index which is generated from a site visit index and a purchase index, the site visit index indicating a social media user activity with content related to a product line featured in a social marketing campaign recite significantly more than the mere execution of mathematical algorithms. (App. Br. 4) (emphasis added). The Examiner maintains that Appellants’ argument is directed to unclaimed subject matter. (Ans. 4—5). In Alice, the Supreme Court sets forth an analytical “framework for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of those concepts.” Alice Corp. Pty, Ltd. v. CLS Banklnt’l, 134 S. Ct. 2347, 2355 (2014) (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66 (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. (citing Mayo, 566 U.S. at 77—78). 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 there are additional elements that “‘transform the nature of the claim’ into a patent-eligible application.” Id. (quoting Mayo, 566 U.S. at 79, 78). In other words, the second step is to “search for an ‘inventive concept’—i.e., an element or combination of 4 Appeal 2016-005211 Application 13/455,497 elements that is ‘sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself.’” Id. (brackets in original) (quoting Mayo, 566 U.S. at 72—73). 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 post solution activity.’” Bilski v. Kappos, 561 U.S. 593, 610-11 (2010) (citation omitted). Appellants merely argue the second step of the Alice analysis. We agree with the Examiner and find that the details of the prioritization index is not a step in the method which would amount to “significantly more” than the mathematical algorithms, but more specifically defines the data used. As a result, Appellants’ argument does not show error in the Examiner’s conclusion of a lack of patent eligible subject matter in representative independent claim 1. Consequently we sustain the rejection of representative independent claim 1 and claims 2—20 grouped therewith. 35U.S.C. § 103 With respect to representative independent claim 1, Appellants contend: However, it is respectfully submitted that a prioritization index which is generated from a site visit index and a purchase index, where the site visit index indicates a social media user activity with content related to a product line featured in a social marketing campaign is patentably distinct from the general disclosure of Lukose, especially where the prioritization index is used to rank a third set of social media users according to their respective propensity-to-purchase value, all as required by claims 1, 7 and 13. This deficiency of Lukose is not cured by Pickton, Wilkins, Kitts, or Blanchard, taken alone or in combination. 5 Appeal 2016-005211 Application 13/455,497 Additionally, nowhere within Lukose, Pickton, Wilkins, Kitts, nor Blanchard, taken alone or in combination, is there any disclosure or suggestion of providing the rank of the third set of social media users as a propensity-to-purchase output, the propensity-to-purchase output being used to identify potential sales leads for the product from the third set of social media users[.\ (App. Br. 5) (emphasis added). The Examiner provides further discussion/restatement of the rejection over the combination of the Lukose and the Pickton references. (Ans. 7—9). We agree with the Examiner. Additionally, Appellants’ contention does not persuade us of error on the part of the Examiner because Appellants are responding to the rejection by attacking the references separately, even though the rejection is based on the combined teachings of the references. Nonobviousness cannot be established by attacking the references individually when the rejection is predicated upon a combination of prior art disclosures. See In re Merck & Co. Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). The Examiner further maintains that Appellants’ argument is directed to a limitation that has not been entered. (Ans. 10). We agree with the Examiner. Appellants’ “arguments fail from the outset because . . . they are not based on limitations appearing in the claims.” In re Self 671 F.2d 1344, 1348 (CCPA 1982). As a result, Appellants have not shown error in the Examiner’s findings of fact or conclusion of obviousness of representative independent claim 1 and claims 2—20, which have not been separately argued. 6 Appeal 2016-005211 Application 13/455,497 CONCLUSIONS The Examiner did not err in rejecting claims 1—20 under 35 U.S.C. §101 based upon a lack of patent eligible subject matter, and the Examiner did not err in rejecting claims 1—20 as obvious under 35 U.S.C. § 103. DECISION For the above reasons, we sustain the Examiner’s obviousness and lack of patent eligible subject matter rejections of claims 1—20. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). AFFIRMED 7