Ex Parte Greenspun

Patent Trial and Appeal Board

Aug 15, 2017

13681142 (P.T.A.B. Aug. 15, 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.
13/681,142 11/19/2012 Daniel Alan Greenspun 36065/301 4048
32642 7590
STOEL RIVES LLP - SLC
201 SOUTH MAIN STREET, SUITE 1100
ONE UTAH CENTER
SALT LAKE CITY, UT 84111
EXAMINER
PATEL, DIPEN M
ART UNIT PAPER NUMBER
3688
NOTIFICATION DATE DELIVERY MODE
08/17/2017 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):
slcpatent@ stoel.com
patlaw@stoel.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DANIEL ALAN GREENSPUN
Applicant: VEGAS.COM, LLC
Appeal 2015-006233
Application 13/681,142
Technology Center 3600
Before ANTON W. FETTING, NINA L. MEDLOCK, and
ALYSSA A. FINAMORE, Administrative Patent Judges.
FETTING, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE1
Daniel Alan Greenspun (Appellant) seeks review under
35 U.S.C. § 134 of a non-final rejection of claims 1, 3—5, 7—10, 12, 13,
15—22, and 24—27, the only claims pending in the application on appeal. We
have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b).
1 Our decision will make reference to the Appellant’s Appeal Brief (“App.
Br.,” filed May 8, 2014) and Reply Brief (“Reply Br.,” filed October 1,
2014), and the Examiner’s Answer (“Ans.,” mailed August 1, 2014), and
Non-Final Action (“Non-Final Act.,” mailed November 14, 2013).
Appeal 2015-006233
Application 13/681,142
The Appellant invented a system and method for providing interactive
computer activities and providing incentives for participating in the
activities. Specification para. 2.
An understanding of the invention can be derived from a reading of
exemplary claim 1, which is reproduced below (bracketed matter and some
paragraphing added).
1. A computer-readable non-transitory storage medium
comprising instructions to cause a computing device to perform
operations for providing an incentive offer to a subset of a
plurality of users visiting a venue, the operations comprising:
[1] receiving a plurality of images corresponding to a
plurality of users visiting the venue,
wherein each of the plurality of images is taken at
a first physical venue;
[2] storing the plurality of images in computer memory;
[3] receiving contact information corresponding to each
of the plurality of users;
[4] storing the contact information in computer memory;
[5] filtering the plurality of images using image
recognition software
to identify a subset of the plurality of users as
selected users,
wherein the selected users are identified as
attractive people by the image recognition software;
[6] generating an incentive offer
configured to provide an incentive for at least
some of the selected users identified as attractive people
to revisit the first physical venue at a later date;
and
[7] transmitting the incentive offer
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to at least some of the selected users identified as
attractive people
using the contact information
The Examiner relies upon the following prior art:
Claims 1, 3—5, 7—10, 12, 13, 15—22, and 24—27 stand rejected under
35 U.S.C. § 101 as directed to non-statutory subject matter.
Claims 1, 3—5, 7—10, 12, 13, 15—22, and 24—27 stand rejected under
35 U.S.C. § 112, first paragraph, as lacking a supporting written description
within the original disclosure.
Claims 1, 3—5, 7—10, 12, 13, 15—22, and 24—27 stand rejected under
35 U.S.C. § 112, second paragraph, as failing to particularly point out and
distinctly claim the invention.
Claims 1, 3—5, 7—10, 12, 13, 15—22, and 24—27 stand rejected under
35 U.S.C. § 103(a) as unpatentable over Agostinelli, Tran, and Shostack.
The issues of eligible subject matter turn primarily on whether the
claims recite more than conceptual advice. The issues of written description
turn primarily on whether the application as originally filed disclosed
filtering images using image recognition software wherein the selected users
are identified as attractive people by the image recognition software. The
Shostack
Tran
Agostinelli
US 2004/0167794 A1
US 2006/0015404 A1
US 7,174,029 B2
Aug. 26, 2004
Jan. 19, 2006
Feb. 6, 2007
ISSUES
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issues of definiteness turn primarily on whether the Specification provides
means for objectively evaluating the criterion of attractiveness. The issues
of obviousness turn primarily on whether the claims are sufficiently
understandable to be meaningfully evaluated by one of ordinary skill.
FACTS PERTINENT TO THE ISSUES
The following enumerated Findings of Fact (FF) are believed to be
supported by a preponderance of the evidence.
Facts Related to Claim Construction
01. The disclosure contains no lexicographic definition
of “attractive.”
02. The ordinary meaning of “attractive” is pleasing to
the senses or mind; interesting because of the likelihood of being
advantageous or profitable; or having the power to attract.2
Facts Related to Appellant’s Disclosure
03. The images in a user profile 216 may be scanned
manually or through use of image recognition software to filter
users 102. Participating entities may then provide incentive offers
to selected users 102 to encourage users 102 to visit respective
establishments, properties, and the like. For example, social clubs
2 American Heritage Dictionary,
https: //www. ahdictionary. com/ word/ search, html? q=attractive
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and similar evening entertainment establishments wish to
encourage visitation of attractive people to increase the reputation
of their property. In offering incentives and promotions to
selected users, a greater portion of the selected users will likely
attend. Specification para. 59.
Facts Related to the Prior Art
Agostinelli
04. Agostinelli is directed to presentation of
informational material such as sales promotions and
advertisements in real-time, based upon awareness of the current
operating environment and the classification of the individual(s)
viewing the informational material. Agostinelli 1:7—15.
05. Agostinelli describes a) sensing the presence of at
least one individual in a predetermined area; b) determining at
least one characteristic of the at least one individual; c) selecting
one of the plurality of informational material programs based upon
the determined of at least one characteristic; and d) presenting the
selected informational material program by the system.
Agostinelli 2:61—3:2.
06. Agostinelli describes the existence of numerous
algorithms available for detecting faces in images. Agostinelli
8:66-67.
07. Agostinelli describes classification algorithms
being used by a sentient system to classify individuals based upon
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the characteristics of the individuals. The classification stage is
composed of one or more classifiers, including a gender classifier,
age classifier, and race classifier. Agostinelli 9:14—21.
08. Agostinelli describes the existence of gender
classification using different classifiers in facial recognition
software. Agostinelli 9:50-54.
09. Agostinelli describes age classification operated by
performing an analysis of a digital image of a subject’s face for
particular detailed facial features such as facial feature ratios and
wrinkle analysis. Agostinelli 9:62—65.
Tran
10. Tran is directed to targeted ads. Tran para. 1.
11. Tran describes a consumer purchasing behavior
profiling system in which consumer profiles are formed and
updated based on a variety of data points, including demographic
data, psychographic data, life style affinity, brand affinity, product
preferences, real-time responses to advertising messages, past
purchases, use of coupon and discount offers, price sensitivity,
and market trends. Tran para. 18.
Shostack
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12. Shostack is directed to the field of Internet dating
services and to services designed to facilitate a compatible
matching amongst individuals seeking companionship via the
World Wide Web. Shostack para. 2.
ANALYSIS
Claims 1, 3—5, 7—10, 12, 13, 15—22, and 2P-27 rejected under
35 U.S.C. § 101 as directed to non-statutory subject matter
The Supreme Court
set forth a framework for distinguishing patents that
claim laws of nature, natural phenomena, and abstract ideas
from those that claim patent-eligible applications of those
concepts. First, [] determine whether the claims at issue are
directed to one of those patent-ineligible concepts. [] If so, we
then ask, “[w]hat else is there in the claims before us? [] To
answer that question, [] consider the elements of each claim
both individually and “as an ordered combination” to determine
whether the additional elements “transform the nature of the
claim” into a patent-eligible application. [The Court] described
step two of this analysis as a 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.”
Alice Corp., Pty. Ltd. v CLSBanklnt’l, 134 S. Ct. 2347, 2355 (2014) (citing
Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289
(2012)).
To perform this test, we must first determine whether the claims at
issue are directed to a patent-ineligible concept.
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Although the Court in Alice made a direct finding as to what the
claims were directed to, we find that this case’s claims themselves and the
Specification provide enough information to inform one as to what they are
directed to.
The preamble to claim 1 recites that it is for providing an incentive
offer to a subset of a plurality of users visiting a venue. The steps in claim 1
result in transmitting an incentive offer to a subset of a plurality of users.
The Specification at paragraph 2 recites that the invention relates to
providing interactive computer activities and providing incentives for
participating in the activities. Thus, all this evidence shows that claim 1 is
directed to providing incentive offers, i.e., marketing promotion.
It follows from prior Supreme Court cases, and Bilski in particular,
that the claims at issue here are directed to an abstract idea. Like the risk
hedging in Bilski, the concept of providing incentive offers is a fundamental
marketing practice long prevalent in our system of commerce. The use of
providing incentive offers is also a building block of sales generation in
market economies. Thus, providing incentive offers, like hedging, is an
“abstract idea” beyond the scope of § 101. See Alice Corp. Pty. Ltd.,
134 S. Ct. at 2356.
As in Alice Corp. Pty. Ltd., we need not labor to delimit the precise
contours of the “abstract ideas” category in this case. It is enough to
recognize that there is no meaningful distinction in the level of abstraction
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between the concept of risk hedging in Bilski and the concept of providing
incentive offers at issue here. Both are squarely within the realm of
“abstract ideas” as the Court has used that term. See Alice Corp. Pty. Ltd.,
134 S. Ct. at 2357.
Further, claims involving data collection, analysis, and display are
directed to an abstract idea. Elec. Power Grp. v. Alstom S.A., 830 F.3d 1350,
1353 (Fed. Cir. 2016) (holding that “collecting information, analyzing it, and
displaying certain results of the collection and analysis” are “a familiar class
of claims ‘directed to’ a patent ineligible concept”); see also In re TLI
Commc’ns LLC Patent Litig., 823 F.3d 607, 611 (Fed. Cir. 2016);
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093—94 (Fed. Cir.
2016). Claim 1, unlike the claims found non-abstract in prior cases, uses
generic computer technology to perform data collection, analysis, and
transmission and does not recite an improvement to a particular computer
technology. See, e.g., McRO, Inc. v. Bandai Namco Games Am. Inc.,
837 F.3d 1299, 1314—15 (Fed. Cir. 2016) (finding claims not abstract
because they “focused on a specific asserted improvement in computer
animation”). As such, claim 1 is directed to the abstract idea of receiving,
analyzing, and transmitting data.
The remaining claims merely describe identifying participants and
modifying the incentive. We conclude that the claims at issue are directed to
a patent-ineligible concept.
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The introduction of a computer into the claims does not alter the
analysis at Mayo step two.
[T]he mere recitation of a generic computer cannot
transform a patent-ineligible abstract idea into a patent-eligible
invention. Stating an abstract idea “while adding the words
‘apply it’” is not enough for patent eligibility. Nor is limiting
the use of an abstract idea “‘to a particular technological
environment.’” Stating an abstract idea while adding the words
“apply it with a computer” simply combines those two steps,
with the same deficient result. Thus, if a patent’s recitation of a
computer amounts to a mere instruction to “implemen[t]” an
abstract idea “on ... a computer,” that addition cannot impart
patent eligibility. This conclusion accords with the preemption
concern that undergirds our § 101 jurisprudence. Given the
ubiquity of computers, wholly generic computer
implementation is not generally the sort of “additional
feature[e]” that provides any “practical assurance that the
process is more than a drafting effort designed to monopolize
the [abstract idea] itself.”
Alice Corp. Pty. Ltd., 134 S. Ct. at 2358 (citations omitted).
“[T]he relevant question is whether the claims here do more than
simply instruct the practitioner to implement the abstract idea [] on a generic
computer.” Alice Corp. Pty. Ltd., 134 S. Ct. at 2359. They do not.
Taking the claim elements separately, the function performed by the
computer at each step of the process is purely conventional. Using a
computer to receive, store, and transmit, and to filter data and generate a
description amounts to electronic data query and retrieval—one of the most
basic functions of a computer. All of these computer functions are
well-understood, routine, conventional activities previously known to the
industry. The use of image recognition software for filtering is not a
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technical feature per se, but merely conceptual advice for using a notoriously
well-known tool for its intended purpose. See In re TLI Commc ’ns LLC
Patent Litig., 823 F.3d at 612—613 (Using a generic telephone for its
intended purpose was a well-established “basic concept” sufficient to fall
under Alice step 1.). In short, each step does no more than require a generic
computer to perform generic computer functions.
Considered as an ordered combination, the computer components of
Appellant’s method add nothing that is not already present when the steps
are considered separately. Viewed as a whole, Appellant’s method claims
simply recite the concept of providing incentive offers as performed by a
generic computer. To be sure, the claims recite doing so by advising one to
use facial recognition to identify attractive people as targets of the offers.
But this is no more than abstract conceptual advice on the parameters for
such promotion and the generic computer processes necessary to process
those parameters; the claims do not recite any particular implementation.
The method claims do not, for example, purport to improve the
functioning of the computer itself. Nor do they effect an improvement in
any other technology or technical field. The 28 pages of Specification spell
out different generic computer equipment that might be used, different
incentives that might be offered, and various user parameters that might be
collected using this concept and the particular steps such conventional
processing would entail based on the concept of matching incentives to
users. They do not describe any particular improvement in the manner a
computer functions. Instead, the claims at issue amount to nothing
significantly more than an instruction to apply the abstract idea of providing
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incentive offers using some unspecified, generic computer. Under our
precedents, that is not enough to transform an abstract idea into a patent-
eligible invention. See Alice Corp. Pty. Ltd., 134 S. Ct. at 2360.
As to the structural claims, they
are no different from the method claims in substance. The
method claims recite the abstract idea implemented on a generic
computer; the system claims recite a handful of generic
computer components configured to implement the same idea.
This Court has long “wam[ed] ... against” interpreting § 101 “in
ways that make patent eligibility ‘depend simply on the
draftsman’s art.’”
Alice Corp. Pty. Ltd., 134 S. Ct. at 2360.
We are not persuaded by Appellant’s argument that the claims do not
preempt all incentives. Reply Br. 7—8. The claims provide conceptual
advice as to providing incentives without reciting any technological
implementation.
That the claims do not preempt all forms of the abstraction or may be
limited to the abstract idea in the e-commerce setting does not make them
any less abstract. See OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359,
1360—1361 (2015). Beyond the abstract idea of incentive distribution, the
claims merely recite well-understood, routine conventional activities, either
by requiring conventional computer activities or routine data-gathering
steps. Considered individually or taken together as an ordered combination,
the claim elements fail to transform the claimed abstract idea into a patent-
eligible application. Id. at 1363. Because the claims are directed to an
abstract idea, the claims must include an “inventive concept” in order to be
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patent-eligible. No such inventive concept is present here. Instead, the
claims “add” only generic computer components such as a “system,”
“processor,” and “computer-readable non-transitory storage medium.”
These generic computer components do not satisfy the inventive concept
requirement. See Mortgage Grader, Inc. v. First Choice Loan Servs. Inc.,
811 F.3d 1314, 1324—1325 (Fed. Cir. 2016).
Claims 1, 3—5, 7—10, 12, 13, 15—22, and 24—27 rejected under
35 U.S.C. § 112, first paragraph, as lacking a supporting written description
within the original disclosure
The Examiner finds no support in the Specification for the
limitation [5] filtering images using image recognition software wherein the
selected users are identified as attractive people by the image recognition
software. Final Act. 2—3. We are not persuaded by Appellant’s argument
that each of the recited elements is (1) explicitly recited within the
Specification and (2) fully implementable by a person having reasonable
skill in the art. App. Br. 7.
The second argument is moot as this is a rejection under written
description rather than enablement. The first argument is erroneous on its
face. The limitation at issue, in each of the independent claims, was not in
the claims as originally filed, but was entered in amendments filed April 22,
2013 and October 14, 2013. The only support in the Specification for using
the recited image recognition software is at paragraph 59, and this is
corroborated by Appellant’s recital of this paragraph as support. App. Br. 4.
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This paragraph makes two separate assertions. First, images in a user
profile may be scanned manually or through use of image recognition
software to filter users. This passage supports the use of image recognition
software to filter users, but not the recited criterion of being attractive. The
second assertion is that social clubs and similar evening entertainment
establishments wish to encourage visitation of attractive people to increase
the reputation of their property. It is immediately apparent that this is no
more than an assertion of desire rather than function or its implementation.
There is no connection between the use of image recognition software
to filter users and the desirability of attractive persons to use some
manifestation of attractiveness as a filter criterion. More to the point, the
attribute of being attractive goes beyond visual attractiveness. Social clubs
and similar evening entertainment establishments may wish to encourage
visitation of attractive people based on many criteria, including wealth,
income, social stature, family ties, vocal mellifluence, education, profession,
and similar other measures of attraction, none of which can be filtered by
image recognition software.
The sentence linking the two passages does not help. This sentence
states that participating entities may provide incentive offers to selected
users to encourage users to visit respective establishments, properties, and
the like. This sentence does not state that the users so selected are the result
of image recognition software filtration and does not state that the offers are
based on the criterion the next sentence lists as being desirable.
Therefore there is no inherent or implied connection between the two
passages. Obviousness is not pertinent.
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One shows that one is “in possession” of the invention by
describing the invention, with all its claimed limitations, not
that which makes it obvious. . . . One does that by such
descriptive means as words, structures, figures, diagrams,
formulas, etc., that fully set forth the claimed invention.
Although the exact terms need not be used in haec verba, . . . ,
the Specification must contain an equivalent description of the
claimed subject matter.
Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997).
Claims 1, 3—5, 7—10, 12, 13, 15—22, and 24—27 rejected under
35 U.S.C. § 112, second paragraph, as failing to particularly point out and
distinctly claim the invention
The Examiner finds the limitation [5] filtering images using image
recognition software wherein the selected users are identified as attractive
people by the image recognition software to be subjective because the
Appellant’s disclosure does not contain any parameter or algorithm
associated with who is identified as attractive and who is identified as not
attractive. Final Act. 3^4. We are not persuaded by Appellant’s argument
that although the Examiner may personally feel that attractiveness is
subjective, the as-filed Specification clearly states that the filtering of
attractive people is performed via image recognition software. App. Br. 14.
First, as we find supra, the Specification does not state that the
filtering of attractive people is performed via image recognition software.
Second, even if the Specification did so state, the issue of what criteria is
used to evaluate the attribute of being attractive remains. The Specification
provides no examples or algorithms to provide one of ordinary skill any idea
of how to evaluate this for filtration. Appellant simply asserts the existence
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of objective measures of attractiveness. Id. Presumably, Appellant is
referring to several publications cited at Appeal Brief 9 in support of
overcoming the written description rejection.
None of these is cited in the originally filed Specification, and none of
them appears to constitute the base knowledge of one of ordinary skill in the
art. In fact, the reference, An Objective System for Measuring Facial
Attractiveness, 18 Plastic & Reconstructive Surgery 757 (2006), available at
http://ecfb.bli.uci.edu/ckfmder/ECFB/files/An_Objective
_System_for_Measuring^Facial_Attractiveness-Bashour.pdf, recites that
“[t]he general conclusion is that indeed it seems possible that at some point
in time researchers will be able to devise a highly accurate method for
measuring facial attractiveness objectively.” Thus, this article admits that
such objective measures were not available.
Further, as we find supra, the attribute of attractiveness goes beyond
visual appearance, and the Specification provides no guidance as to
objective indicia for attractiveness beyond visual appearance. Thus, the
originally filed Specification provides no description of how to objectively
evaluate the attribute of attractiveness. Absent this, such evaluation is
subjective. “The scope of claim language cannot depend solely on the
unrestrained, subjective opinion of a particular individual purportedly
practicing the invention.” Datamize LLC v Plumtree Software, Inc.,
417 F.3d, 1342, 1350 (Fed. Cir. 2005).
Claims 1, 3—5, 7—10, 12, 13, 15—22, and 24—27 rejected under
35 U.S.C. § 103(a) as unpatentable over Agostinelli, Tran, and Shostack
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We are unable to ascertain the scope of these claims because one of
ordinary skill would not be able to ascertain the metes and bounds of using
the characteristic of being attractive as a filter in image recognition software.
As a procedural matter, we reverse the rejection of claims 1, 3—5, 7—
10, 12, 13, 15—22, and 24—27 under § 103. A rejection of a claim, which is
so indefinite that “considerable speculation as to meaning of the terms
employed and assumptions as to the scope of such claims” is needed, is
likely imprudent. See In re Steele, 305 F.2d 859, 862 (CCPA 1962) (holding
that the examiner and the board were wrong in relying on what at best were
speculative assumptions as to the meaning of the claims and basing a
rejection under 35 U.S.C. § 103 thereon). We find it imprudent to speculate
as to the scope of claims 1, 3—5, 7—10, 12, 13, 15—22, and 24—27 in order to
reach a decision on the obviousness of the claimed subject matter under
§103. ft should be understood, however, that our reversal is based on the
indefmiteness of the claimed subject matter and does not reflect on the
merits of the underlying rejection.
CONCLUSIONS OF LAW
The rejection of claims 1, 3—5, 7—10, 12, 13, 15—22, and 24—27 under
35 U.S.C. § 101 as directed to non-statutory subject matter is proper.
The rejection of claims 1, 3—5, 7—10, 12, 13, 15—22, and 24—27 under
35 U.S.C. § 112, first paragraph, as lacking a supporting written description
within the original disclosure is proper.
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The rejection of claims 1, 3—5, 7—10, 12, 13, 15—22, and 24—27 under
35U.S.C. § 112, second paragraph, as failing to particularly point out and
distinctly claim the invention is proper.
The rejection of claims 1, 3—5, 7—10, 12, 13, 15—22, and 24—27 under
35 U.S.C. § 103(a) as unpatentable over Agostinelli, Tran, and Shostack is
improper based on the indefiniteness of the claimed subject matter and does
not reflect on the merits of the underlying rejection.
DECISION
The rejection of claims 1, 3—5, 7—10, 12, 13, 15—22, and 24—27 is
affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l)(iv) (2011).
AFFIRMED
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