Ex Parte Kandanala et al

Patent Trial and Appeal Board

Oct 27, 2017

13421083 (P.T.A.B. Oct. 27, 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.
13/421,083 03/15/2012 Venket S. Kandanala 20110163 7117
25537 7590
VERIZON
PATENT MANAGEMENT GROUP
1320 North Court House Road
9th Floor
ARLINGTON, VA 22201-2909
EXAMINER
CHONG CRUZ, NADJA N
ART UNIT PAPER NUMBER
3623
NOTIFICATION DATE DELIVERY MODE
10/31/2017 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):
patents @ verizon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte VENKET S. KANDANALA, NICKY PINAKIN JOSHI,
SUDHARSAN SELVAKUMAR, LISA A. CAPUTO,
MOUSUMI DASGUPTA, NISHEETH GUPTA,
KARTHIK SRINIVASAN, RAJESH NARAYANAN,
ANAND N. SANKARAN, and JUBISH C. PARAMBATH
Appeal 2016-005005
Application 13/421,0831
Technology Center 3600
Before ELENI MANTIS MERCADER, JAMES W. DEJMEK, and
JOYCE CRAIG, Administrative Patent Judges.
DEJMEK, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 14—17, 19—24, 26, 28, 29, 31, 33—35, 37, and 39-45. Appellants have
canceled claims 1—13, 18, 25, 27, 30, 32, 36, and 38. Amend. 2, 4, 6, 7, 9
(filed February 19, 2015). We have jurisdiction over the remaining pending
claims under 35 U.S.C. § 6(b).
We affirm.
1 Appellants identify Verizon Communications Inc. and its subsidiary
companies as the real parties in interest. App. Br. 3.
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Application 13/421,083
STATEMENT OF THE CASE
Introduction
Appellants’ disclosed and claimed invention is directed to providing a
purchase offer for digital content, where the purchase offer includes a price
for the digital content at a required customer purchasing participation
threshold.” Abstract. In other words, if enough customers agree to purchase
the digital content at the offered price (i.e., the customer purchasing
participation threshold is met or exceeded), then the transaction is
completed. However, if the customer purchasing threshold is not met (i.e.,
not enough customers agree to purchase the digital content at the offered
price) within a specified time period, the offer expires and the pending
transactions with those customers that had agreed to purchase the digital
content is terminated. Spec. 116. In a disclosed embodiment, the customer
purchasing participation threshold for an offer may be based on historical
customer activity (e.g., preferences, past purchases, or geographic location
associated with the customer). Spec. H 16, 46.
Claim 14 is representative of the subject matter on appeal and is
reproduced with the disputed limitation emphasized in italics'.
14. A method, comprising:
monitoring, by a network device associated with a service
provider, customer activity with respect to programming content
from a network service, wherein the customer activity includes
at least one of viewing, renting, or purchasing of programming
content via a set-top box associated with a customer;
storing, in a database associated with the network device,
the monitored customer activity in customer profile data
corresponding to historical customer activity associated with the
customer;
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generating, by the network device, a first purchase offer
for digital content, wherein the first purchase offer includes a
purchase offer price for the digital content at a required
customer purchasing participation threshold that is determined
based on the historical customer activity;
targeting, by the network device, a group of customers to
receive the first purchase offer based on the customer profile
data;
presenting, by the network device, the first purchase offer
to the targeted group of customers, via a network and multiple
devices, during an offer period;
determining, by the network device, participating
customers, from the targeted group of customers, that agree to
accept the first purchase offer;
charging, by the network device, the participating
customers the purchase offer price, if the customer purchasing
participation threshold is reached prior to expiration of the offer
period; and
notifying, by the network device, the participating
customers of expiration of the first purchase offer, if the
customer purchasing participation threshold is not reached prior
to the expiration of the offer period.
The Examiner’s Rejections
1. Claims 14-17, 19-24, 26, 28, 29, 31, 33-35, 37, and 39-A5
stand rejected under 35 U.S.C. § 101 as being directed to non-statutory
subject matter. Final Act. 2—5.
2. Claims 14-17, 19-24, 26, 28, 29, 31, 33-35, 37, and 39-A5
stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Mason
(US 2010/0287103 Al; Nov. 11, 2010); Kapner, III et al. (US 7,596,797 Bl;
Sept. 29, 2009) (“Kapner”); and Jaffe (US 2012/0109732 Al; May 3, 2012).
Final Act. 5—19.
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Issues on Appeal
1. Did the Examiner err in concluding Appellants’ claimed
invention is directed to an abstract idea and the recited claim limitations do
not provide meaningful limitations to transform the abstract idea into patent-
eligible subject matter?
2. Did the Examiner err in finding Mason teaches or suggests
generating a first purchase offer for digital content, “wherein the first
purchase offer includes a purchase offer price for the digital content at a
required customer purchasing participation threshold that is determined
based on the historical customer activity,” as recited in claim 14?
3. Did the Examiner err in finding Mason teaches or suggests
generating a second purchase offer for digital content “wherein the second
purchase offer includes a different purchase offer price for the digital content
at a different required customer purchasing participation threshold,” as
recited in claim 24?
ANALYSIS2
Rejection under 35 U.S.C. §101
In rejecting the pending claims under 35 U.S.C. § 101, the Examiner
concludes the claims “are directed to the abstract idea of purchasing digital
content based on purchase offer price and [a] participation threshold,” which
2 Throughout this Decision, we have considered the Appeal Brief, filed
October 8, 2015 (“App. Br.”); the Reply Brief, filed April 11, 2016 (“Reply
Br.”); the Examiner’s Answer, mailed February 12, 2016 (“Ans.”); and the
Final Office Action, mailed May 20, 2015 (“Final Act.”), from which this
Appeal is taken.
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the Examiner determines is a method of organizing human activities. Final
Act. 2. Additionally, the Examiner concludes the additional limitations,
separately, or as an ordered combination, do not provide meaningful
limitations (i.e., do not add significantly more) to transform the abstract idea
into a patent eligible application. Final Act. 2—3.
Appellants argue the claims are not directed to organizing human
activities and do not fall within the identified categories of abstract ideas.
App. Br. 10-14; Reply Br. 4—5. Additionally, Appellants assert “the claim
elements, taken as a whole, amount to significantly more than” the abstract
idea proposed by the Examiner. App. Br. 14—15. In particular, Appellants
contend that when the individual limitations are considered as an ordered
combination, the claimed invention is “not merely the routine or
conventional use of [a computer].” App. Br. 14—15 (citing DDR Holdings,
LLCv. Hotels.com, L.P., 773 F.3d 1245, 1259 (Fed. Cir. 2014)). Instead,
Appellants argue the claims apply the inventive concept by use of a
particular machine and include the unconventional step of determining a
customer purchasing participation threshold based on historical customer
activity. Reply Br. 6—'7.
For the reasons discussed below, Appellants have not persuaded us of
error. The Supreme Court’s two-step framework guides our analysis. Alice
Corp. Pty. Ltd. v. CLS Bank Inti, 134 S. Ct. 2347, 2355 (2014). If a claim
falls within one of the statutory categories of patent eligibility (i.e., a
process, machine, manufacture or composition of matter) then the first
inquiry is whether the claim is directed to one of the judicially-recognized
exceptions (i.e., a law of nature, a natural phenomenon, or an abstract idea).
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If so, the second step is to determine whether any element, or combination of
elements, amounts to significantly more than the judicial exception.
Although the independent claims each broadly fall within the statutory
categories of patentability, the Examiner determines the claims are directed
to a judicially-recognized exception—i.e., an abstract idea. Final Act. 2—5;
Ans. 3. In particular, the Examiner finds the claims are directed to the
“abstract idea of monitoring customer activities in order to provide a
purchase offer (purchase offer price and customer participation threshold
based on the historical customer activities i.e., targeting offer based on
customer profiles).” Ans. 3.
Instead of using a definition of an abstract idea, “the decisional
mechanism courts now apply is to examine earlier cases in which a similar
or parallel descriptive nature can be seen—what prior cases were about, and
which way they were decided.” Amdocs (Isr.) Ltd. v. Openet Telecom, Inc.,
841 F.3d 1288 (Fed. Cir. 2016) (citing Elec. Power Grp., LLC v. Alstom
S.A., 830 F.3d 1350, 1353—54 (Fed. Cir. 2016)); accord United States Patent
and Trademark Office, July 2015 Update: Subject Matter Eligibility
(July 30, 2015), p. 3, https://www.uspto.gov/sites/default/files/documents/
ieg-july-2015-update.pdf (instructing examiners that “a claimed concept is
not identified as an abstract idea unless it is similar to at least one concept
that the courts have identified as an abstract idea.”). As part of this inquiry,
we must “look at the ‘focus of the claimed advance over the prior art’ to
determine if the claim’s ‘character as a whole’ is directed to excluded
subject matter.” Affinity Labs, of Texas v. DirecTV, LLC, 838 F.3d 1253,
1257 (Fed. Cir. 2016).
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Here, Appellants’ claims are directed to generating a purchase offer
for digital content and presenting the offer to a target group of customers. In
addition to the acceptance of a purchase price, a defined number of offers
must also be accepted within a specified time period for any of the
transactions to be completed. If the number of offers accepted during the
specified period of time is less than the determined number (i.e., a customer
purchasing participation threshold), the pending transactions are terminated.
Further, the claims recite the customer purchasing participation threshold is
based on historical customer activity, which corresponds to customer
activity monitored by a network device and stored in a database.
Our reviewing court has said that abstract ideas include “collecting
information, including when limited to particular content.” Elec. Power,
830 F.3d at 1353. Further, “merely presenting the results of abstract
processes of collecting and analyzing information, without more (such as
identifying a particular tool for presentation), is abstract as an ancillary part
of such collection and analysis.” Elec. Power, 830 F.3d at 1354.
Additionally, “1) collecting data, 2) recognizing certain data within the
collected data set, and 3) storing that recognized data in memory” is also an
abstract idea. Content Extraction & Transmission LLC v. Wells Fargo Bank,
N.A., 776 F.3d 1343, 1347 (Fed. Cir. 2014). Thus, the claimed limitations of
monitoring and storing customer activity are abstract ideas.
Further, creating a contractual relationship is “beyond question of
ancient lineage.” BuySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed.
Cir. 2014); see also OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359
(Fed. Cir. 2015) (finding claims directed to price optimization on a generic
computer to be an abstract idea). Also, more recently, our reviewing court
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has also found providing restricted access to a resource is an abstract idea.
Prism Techs. LLCv. T-Mobile USA, Inc., Nos. 2016-2031, 2016-2049, 2017
WL 2705338 *2 (Fed. Cir. June 23, 2017); see also In re TLI Commc ’ns
LLC Patent Litig., 823 F.3d 607, 613 (Fed. Cir. 2016); Intellectual Ventures
I LLCv. Capital One Bank (USA), 792 F.3d 1363, 1367 (Fed. Cir. 2015).
Here, independent claim 14, for example, recites the essential elements of a
contractual relationship (offering digital content (at a specified price and
participation threshold), acceptance of the offer, and the digital content (i.e.,
consideration)) and provides access to the digital content only after certain
conditions have been met (i.e., acceptance of the purchase offer price and
meeting or exceeding a customer purchasing participation threshold).
Further, merely combining several abstract ideas does not render the
combination any less abstract. Cf. Shortridge v. Found. Constr. Payroll
Serv., LLC, No. 14-CV-04850-JCS, 2015 WL 1739256, *11 (N.D. Cal.
Apr. 14, 2015), affd, No. 2015-1898, 2016 WL 3742816 (Fed. Cir. July 13,
2016). Thus, we agree with the Examiner the claims are directed to the
abstract idea of purchasing digital content based on purchase offer price and
a participation threshold.
Because we determine the claims are directed to an abstract idea, we
analyze the claims under step two to determine if there are additional
limitations that individually, or as an ordered combination, ensure the claims
amount to “significantly more” than the abstract idea. Alice, 134 S. Ct. at
2357. The implementation of the abstract idea involved must be “more than
the performance of ‘well-understood, routine, [and] conventional activities
previously known to the industry.’” Content Extraction, 776 F.3d at 1347—
48.
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Here, we agree with the Examiner that the steps of (i) “monitoring”
customer activity; (ii) “storing” the monitored customer activity;
(iii) “generating” a purchase offer; (iv) “presenting” the offer to a target
group of customers; (v) “determining” whether the offer has been accepted;
and (vi) either “charging” the customers that accepted the offer is a
condition has been met (i.e., the customer purchasing participation threshold
has been met or exceeded) or “notifying” the customers that the offer has
expired if the condition has not been met are well-understood, routine, and
conventional activities. Ans. 9. As the Examiner explains, these functions
are performed by a network device comprising a communication interface,
wherein the network device is a generic computing platform performing
generic computer functions. Ans. 9; see also Spec. ]Hf 33—38 (describing the
network components). Further, we note the Specification states that “[n]o
element... of the present application should be construed as critical or
essential to the invention unless explicitly described as such.” Spec. 1 59.
Absent such explicit description of a particular machine on which to
implement the claimed invention, we agree with the Examiner that the
recited limitation—individually and as an ordered combination—may be
performed on a generic computing platform performing generic computer
functions. Further, contrary to Appellants’ assertions (see Reply Br. 7), the
generation of a purchase offer including a purchase price and a participation
threshold based on historical customer activity is not an unconventional step.
Rather, the purchase offer price is a well-known aspect of creating a contract
and setting a participation threshold to be met in order for the transaction to
be completed simply describes a condition precedent, or term, of the offer.
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Appellants also assert the claims do not attempt to preempt every
application of purchasing digital content based on purchase offer price and a
participation threshold. App. Br. 14.
“[Wjhile preemption may signal patent ineligible subject matter, the
absence of complete preemption does not demonstrate patent eligibility.”
FairWarningIP, LLC, v. Iatric Sys., Inc., 839 F.3d 1089, 1098 (Fed. Cir.
2016) (quoting Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371,
1379 (Fed. Cir. 2015)); see also OIP Techs., 788 F.3d at 1362-63 (“[T]hat
the claims do not preempt all price optimization or may be limited to price
optimization in the e-commerce setting do not make them any less
abstract.”). Further, “[wjhere a patent’s claims are deemed only to disclose
patent ineligible subject matter under the Mayo framework, as they are in
this case, preemption concerns are fully addressed and made moot.” Ariosa,
788 F.3d at 1379.
For the reasons discussed supra, we are unpersuaded of Examiner
error. Accordingly, we sustain the Examiner’s rejection of independent
claim 14 as being directed to non-statutory subject matter. Additionally, for
similar reasons, we sustain the Examiner’s rejection of independent claims
20 and 34, which recite commensurate limitations and were not argued
separately, as also being directed to non-statutory subject matter. See App.
Br. 16. Also, for similar reasons, we sustain the Examiner’s rejection of
claims 15—17, 19, 21—24, 26, 28, 29, 31, 33, 35, 37, and 39-45, which
depend therefrom and were not argued separately. See App. Br. 16; see also
37C.F.R. §41.37(c)(l)(iv).
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Rejection under 35 U.S.C. § 103(a)
a. Claims 14-17, 19-23, 26, 28, 31, 33, 34, 37, and 39-45
Claim 14 recites, in relevant part, “generating ... a first purchase
offer for digital content, wherein the first purchase offer includes a purchase
offer price for the digital content at a required customer purchasing
participation threshold that is determined based on the historical customer
activity.” Appellants’ arguments suggest this limitation requires that a
customer purchasing participation threshold is determined based on
historical customer activity. We note, however, this limitation may be
construed as the first purchase offer including a purchase offer price for a
given customer purchasing participation threshold is based on historical
customer activity. In other words, it is the purchase offer price and not the
customer purchasing participation threshold that is determined based on
historical customer activity. In the interest of compact prosecution, we will
use the construction suggested by Appellants’ arguments. However, in the
event of continued prosecution, we invite the Examiner to determine
whether claim 14 comports with the requirements of pre-AIA 35 U.S.C.
§112, second paragraph.3 See Ex parte Miyazaki, 89 USPQ2d 1207, 1211—
12 (BPAI 2008) (precedential) (if a claim is amenable to two or more
plausible claim constructions, the USPTO is justified in requiring an
applicant to more precisely define the metes and bounds of the invention by
holding the claim unpatentable as indefinite).
3 While the Board is authorized to reject claims under 37 C.F.R. § 41.50(b),
no inference should be drawn when the Board elects not to do so. See
Manual of Patent Examining Procedure (MPEP) § 1213.02.
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Appellants contend Mason does not teach or suggest that its “tipping
point” (i.e., what the Examiner finds to meet the claimed customer
purchasing participation threshold) is determined based on information
about or from customers (i.e., historical customer activity). App. Br. 18;
Reply Br. 8—9. Instead, Appellants assert Mason discloses that vendors set
the tipping point associated with a particular offer. App. Br. 18 (citing
Mason || 23, 61).
Mason is generally directed to the offer and sale of goods and services
at a discount, “wherein the sale of the goods and services is contingent upon
a certain number of actual sales, i.e., a tipping point.” Mason 12. “Once the
customer accepts an offer, payment information for that offer is exchanged,
but no payment is actually made. If and when the required number of offers
are accepted, i.e., the tipping point, payment based on the payment
information is completed.” Mason 12. Mason expressly states “the tipping
point is defined as the minimum quantity of the good or service to be
accepted by consumers in order to execute the sale of the good or service.”
Mason 161. Additionally, Mason states that typically, the tipping point is
set by the vendor. Mason || 23, 61.
The Examiner finds Mason teaches the monitoring and collection of
customer activities, including demographic profile, likes and dislikes, price
range with which they are comfortable, previous purchases, ratings given to
previous purchases, etc. Ans. 11—12 (citing Mason || 6, 39-40, 64—67).
The Examiner explains this information (i.e., historical customer activity) is
used so that “offers can be made that are more relevant or pertinent to that
particular customer and thus have a better chance of being accepted.”
Ans. 11 (quoting Mason 139). Thus, the Examiner finds because Mason
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describes that historical customer activity is considered to provide relevant
deals that have a better chance of being accepted, Mason’s tipping point is
similarly determined based on historical customer activity. Ans. 12.
The obviousness inquiry “not only permits, but requires,
consideration of common knowledge and common sense.” DyStar
Textilfarben GmbH & Co. v. C.H. Patrick Co., 464 F.3d 1356, 1367 (Fed.
Cir. 2006); see also KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007).
Here, we agree with the Examiner that by presenting the offer to a
targeted group of customers based on historical customer activities, and
determining a tipping point (i.e., a customer purchasing participation
threshold) from this targeted group, the tipping point is determined based on
historical customer activity, as broadly recited in the claims.
For the reasons discussed supra, we are unpersuaded of Examiner
error. Accordingly, we sustain the Examiner’s rejection of independent
claim 14. Additionally, we sustain the Examiner’s rejection of independent
claims 20 and 34, which recite similar limitations and were not argued
separately. See App. Br. 19. Further, we sustain the Examiner’s rejection of
claims 15—17, 19, 21—23, 26, 28, 31, 33, 37, and 39-45, which depend
therefrom and were not argued separately. See App. Br. 19.
b. Claims 24, 29, and 35
Claim 24 depends from claim 14 and further recites “generating, at the
network device, a second purchase offer for the digital content, wherein the
second purchase offer includes a different purchase offer price for the digital
content at a different required customer purchasing participation threshold.”
Claims 29 and 35 each recite a similar limitation.
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Appellants argue Mason does not suggest a different offer price and/or
a different required customer purchasing participation threshold, but instead
discloses offering the first purchase to a different group of customers. App.
Br. 19-20 (citing Mason | 87); Reply Br. 9-10. Further, Appellants assert
Mason does not suggest that the offer to the second group of customers is
associated with a different customer purchasing participation threshold (i.e.,
Mason’s tipping point). Reply Br. 10.
As an initial matter, Appellants’ reliance on paragraph 87 of Mason is
not responsive to the Examiner’s rejection, which cites paragraph 86 of
Mason. See Final Act. 14; Ans. 12—13. Mason, as identified by the
Examiner, expressly states “the discount retailing system may offer one deal
to a customer group or group of customers one day, and a different deal to a
different customer or group of customers that same day.” Mason | 86
(emphases added); Final Act. 14 (citing Mason | 86). In particular, the
Examiner finds the claimed second purchase offer including a different
purchase price and different required customer purchasing participation
threshold is met by Mason’s disclosure of a different deal. Ans. 12—13.
An obviousness analysis “need not seek out precise teachings directed
to the specific subject matter of the challenged claim, for a court can take
account of the inferences and creative steps that a person of ordinary skill in
the art would employ.” KSR, 550 U.S. at 418.
Mason discloses that the terms of a discount offer include the
“discount to be provided, duration of the offer, for example 24 hours, and
maximum number, if any, of the good or service the vendor is willing to
offer, expiration of the good of service, or restrictions associated with the
good or service.” Mason | 61. As previously noted, Mason defines the
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tipping point (i.e., required customer purchasing participation threshold) “as
the minimum quantity of the good or service to be accepted by consumers in
order to execute the sale of the good or service.” Mason 161. In other
words, the tipping point also serves as a restriction on the offer. Thus, we
agree with the Examiner that by disclosing a “different deal” (i.e., a different
offer) being presented to a group of customers, Mason teaches, or reasonably
suggests, a different purchase price and different required customer
purchasing participation threshold (i.e., tipping point).
For the reasons discussed supra, we are unpersuaded of Examiner
error. Accordingly, we sustain the Examiner’s rejection of claim 24. For
similar reasons, we also sustain the Examiner’s rejection of claims 29 and
35, which recite similar limitations and were not argued separately. See
App. Br. 20.
DECISION
We affirm the Examiner’s decision rejecting claims 14—17, 19—24, 26,
28, 29, 31, 33—35, 37, and 39-45 under 35 U.S.C. § 101.
We affirm the Examiner’s decision rejecting claims 14—17, 19—24, 26,
28, 29, 31, 33-35, 37, and 39-45 under 35 U.S.C. § 103(a).
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.
§ 41.50(f).
AFFIRMED
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