Ex Parte KingDownload PDFPatent Trial and Appeal BoardSep 21, 201812840947 (P.T.A.B. Sep. 21, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/840,947 07/21/2010 909 7590 09/25/2018 Pillsbury Winthrop Shaw Pittman, LLP PO Box 10500 McLean, VA 22102 FIRST NAMED INVENTOR Guy Phillip William King 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. 034250-0437031 1064 EXAMINER LEVINE, ADAM L ART UNIT PAPER NUMBER 3625 NOTIFICATION DATE DELIVERY MODE 09/25/2018 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): docket_ip@pillsburylaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte GUY PHILLIP WILLIAM KING Appeal2017-006771 Application 12/840,947 Technology Center 3600 Before MICHAEL J. STRAUSS, JOSEPH P. LENTIVECH, and AMBER L. HAGY, Administrative Patent Judges. LENTIVECH, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner's decision to reject claims 1, 3-5, 7-25, and 43. Claims 2, 6, and 26-42 have been canceled. See App. Br. 15-18 (Claims App'x). We have jurisdiction over the pending claims under 35 U.S.C. § 6(b ). We affirm. 1 According to Appellant, the real party in interest is RetailMeNot, Inc. App. Br. 2. Appeal2017-006771 Application 12/840,947 STATEMENT OF THE CASE Appellant's Invention Appellant's invention generally relates to "determining average values for displayed information items." Spec. ,r 1. The Specification provides that "[t ]he information item may facilitate access to one or more promotional offers" and "[t]he promotional offers may be presented in the form of a coupon, for example." Spec. ,r 34. Claim 1, which is representative, reads as follows: 1. A method of displaying information items, the method compnsmg: determining, with one or more computer systems, an average value for each of a plurality of previously displayed information items based on at least one stored input value received for each of the information items, wherein: determining the average value comprises filtering the at least one input value according to at least one filter criterion, and wherein the at least one filter criterion includes a first sub- criterion and a second sub-criterion, the second sub-criterion specifying that each input value is not less than a first proportion of the average of all other input values received in relation to the information item, the information items comprise at least one of promotional offers and shopping tips, and the stored input values are values indicative of monetary savings reported by users for the promotional off er or shopping tip; determining, responsive to a first serve request and based on at least one display criterion, at least one of the information items to be displayed at a client device; and transmitting to the client device code executable by a browser application to display the at least one information item 2 Appeal2017-006771 Application 12/840,947 and the average value determined for each at least one information item. Rejection2 Claims 1, 3-5, 7-25, and 43 stand rejected under 35 U.S.C. § 101 because the claimed subject matter is judicially-excepted from patent eligibility under § 101. Final Act. 6-9. ANALYSIS Rejection under 35 U.S.C. § 101 Under 35 U.S.C. § 101, a patent may be obtained for "any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof." The Supreme Court has "long held that this provision contains an important implicit exception: Laws of nature, natural phenomena, and abstract ideas are not patentable." Alice Corp. Pty. Ltd. v. CLSBankint'l, 134 S.Ct. 2347, 2354 (2014) (quotingAss'nfor Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)). The Supreme Court in Alice reiterated the two-step framework previously set forth in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66, 82-84 (2012), "for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent- eligible applications of those concepts." Alice, 134 S. Ct. at 2355. The first step in that analysis is to "determine whether the claims at issue are directed to one of those patent-ineligible concepts," such as an abstract idea. Id. The 2 The rejection of claim 43 under 35 U.S.C. § 112, second paragraph, was withdrawn. Ans. 2. 3 Appeal2017-006771 Application 12/840,947 inquiry often is whether the claims are directed to "a specific means or method" for improving technology or whether they are simply directed to an abstract end-result. McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314 (Fed. Circ. 2016). If the claims are not directed to a patent- ineligible concept, the inquiry ends. Otherwise, the inquiry proceeds to the second step, where the elements of the claims are considered "individually and 'as an ordered combination' to determine whether the additional elements 'transform the nature of the claim' into a patent-eligible application." Alice, 134 S. Ct. at 2355 (quoting Mayo, 566 U.S. at 78-79). We, therefore, look to whether the claims focus on a specific means or method that improves the relevant technology or are instead directed to a result or effect that itself is the abstract idea and merely invoke generic processes and machinery. See Enfzsh, LLC v. Microsoft Corp., 822 F .3d 1327, 1336 (Fed. Cir. 2016). Step 1 The Examiner finds the claims are directed to [A] method of producing results for display based on an algorithm that filters promotional items and shopping tips. It is a method of organizing human activity in pursuit of the fundamental economic practice of improving shopping efficiency, merely utilized within a computer network, and is considered to be an abstract idea. Final Act. 8. Initially, Appellant contends the rejection is improper because the Examiner "does not properly identify an abstract idea to which the claims are directed." App. Br. 5; see also Reply Br. 2-3. Appellant argues the Examiner, instead, "has identified an idea only tangentially related to the claims and, then, announced that unrelated idea abstract." Id. We disagree. 4 Appeal2017-006771 Application 12/840,947 As noted supra, the Examiner finds the claims are directed to "a method of producing results for display based on an algorithm that filters promotional items and shopping tips." Final Act. 8. The Examiner determines that the method to which the claims are directed "is a method of organizing human activity in pursuit of the fundamental economic practice of improving shopping efficiency, merely utilized within a computer network" and, therefore, that the claims are directed to an abstract idea. Id. As such, the Examiner has identified that to which the claims are directed and has provided a basis for determining that the claims are directed to an abstract idea. Appellant next contends that the claims are not directed to an abstract idea but, instead, are directed to a patent-eligible improvement in computer functionality. App. Br. 7-9; Reply Br. 3--4. Appellant argues the claims "improve upon traditional computer techniques for calculating statistics on user feedback about offers." Appellant further argues: Identifying, and filtering, unreliable inputs is difficult at scale (e.g., for "a large number of promotional offers), particularly given user expectations for low-latency, responsive websites. And what counts as an unreasonable input for one coupon, or other offer, might be different for other offers. To mitigate these problems, claimed embodiments apply offer-specific dynamic thresholds to user inputs before calculating statistics on user feedback about online coupons. These thresholds adjust over time, as the system learns from offer-specific user feedback. Different offers have different filter thresholds, and those filter thresholds change over time as feedback accumulates. Accordingly, claimed embodiments improve upon traditional techniques for determining statistics about online promotional offers by applying offer-specific, user- input filters that learn from past user inputs to dynamically adjust the thresholds by which user input is excluded from the statistics. 5 Appeal2017-006771 Application 12/840,947 App. Br. 8 ( citing Spec. ,r,r 40, 89, 97, 98) (internal citations omitted). We do not find Appellant's arguments persuasive. All the steps recited in Appellant's independent claims 1 and 43, including, for example: ( 1) determining ... an average value for each of a plurality of previously displayed information items based on at least one stored input value received for each of the information items" by "filtering the at least one input value according to at least one filter criterion;" (2) "determining, responsive to a first serve request and based on at least one display criterion, at least one of the information items to be displayed at a client device;" and (3) "transmitting to the client device code executable by a browser application to display the at least one information item and the average value determined for each at least one information item" are abstract processes of collecting, storing, and analyzing information of a specific content. Information, as such, is intangible. See Microsoft Corp. v. AT&T Corp., 550 U.S. 437, 451 n.12 (2007). Information collection and analysis, including when limited to particular content, is within the realm of abstract ideas. See, e.g., Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1349 (Fed. Cir. 2015); Digitech Image Techs., LLC v. Elecs.for Imaging, Inc., 758 F.3d 1344, 1351 (Fed. Cir. 2014); and CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1370 (Fed. Cir. 2011). The claims do not go beyond requiring the collection, analysis, and display of available information in a particular field, stating those functions in general terms, without limiting them to technical means for performing the functions that are arguably an advance over conventional computer and network technology. The claims define a desirable information-based result and are 6 Appeal2017-006771 Application 12/840,947 not limited to an inventive means for achieving the result. As such, the claims are directed to an abstract idea. We are not persuaded by Appellant's arguments that the claims are similar to the claims in BASCOM Glob. Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016) because they are directed to a specific application in the marketplace for online publishers of offers and shopping tips. App. Br. 9-11. The Federal Circuit has held that "receiving transmitted data over a network and displaying it to a user merely implicates purely conventional activities that are the 'most basic functions of a computer."' Intellectual Ventures I LLC v. Erie Indem. Co., 850 F.3d 1315, 1331 (Fed. Cir. 2017) (quoting Alice, 134 S. Ct. at2359). Put another way, "[a]n abstract idea on 'an Internet computer network' or on a generic computer is still an abstract idea." BASCOM, 827 F.3d at 1348. We agree with the Examiner that the claims neither address a technical problem nor provide a technical solution, but merely recite limitations directed to the application of an abstract idea on a computer. The claims do not go beyond reciting the performance of generic functions, and fail to adequately identify technical means for performing the claimed steps that are arguably an advance over conventional computer technology. See Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1351 (Fed. Cir. 2016). "We have repeatedly held that such invocations of computers and networks that are not even arguably inventive are insufficient to pass the test of an inventive concept in the application of an abstract idea." Id. at 1355 (quotation omitted). We are also unpersuaded by Appellant's arguments that the claims are similar to the claims in DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 7 Appeal2017-006771 Application 12/840,947 1245, 1257 (Fed. Cir. 2014) because "the claims recite several steps that are intimately tied to computer technology and address problems specifically arising in the realm of computer networks." App. Br. 11; Reply Br. 5. Appellant's arguments do not explain how either the problem or solution addressed by the pending claims are technical. Appellant's Specification does not describe any new or unique computer hardware or software, and the law is clear that simply programming a computer to perform what would otherwise be an abstract idea is not sufficient to impart patent eligibility. See Alice, 134 S. Ct. at 2359. Unlike the claims at issue in cases such as DDR ( claims at issue are "necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks" (DDR, 773 F.3d at 1257)) and Enfzsh ( claims at issue are "directed to a specific implementation of a solution to a problem in the software arts" (Enfzsh, 822 F.3d at 1339)), the claims here merely address a business issue through the use of generic, computer-related recitations that do not add meaningful limitations to steps otherwise directed to an abstract idea. Step 2 Turning to the second step of the analysis, we agree with the Examiner that the claims do not recite "significantly more" than the abstract idea because: [T]he claims do not amount to an improvement to another technology or technical field, do not amount to an improvement to the functioning of a computer itself, do not move beyond a general link of the use of an abstract idea to a particular technological environment, and merely amount to the application or instructions to apply the abstract idea on a computer. The system claims amount to nothing more than a recitation of 8 Appeal2017-006771 Application 12/840,947 generic computer structure that serves to perform generic computer functions that are well-understood, routine, and conventional activities previously known to the pertinent industry. Additional claim elements do not provide meaningful limitations to transform the abstract idea into a patent eligible application of the abstract idea. Final Act. 8. Appellant's argument that [T]he prior notice of allowance acknowledged that the claims recite novel, non-obvious subject matter, a decision that clearly did not arise from merely applying the alleged abstract idea with a computer. Rather, the claims recite specific limitation other than what is well-understood, routine and convention in the field (App. Br. 12) is not persuasive because although the second step in the Alice/Mayo framework is termed a search for an "inventive concept," the analysis is not an evaluation of novelty or non-obviousness, but rather a search for "'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, 134 S. Ct. at 2355. A novel and nonobvious claim directed to a purely abstract idea is, nonetheless, patent- ineligible. See Mayo, 132 U.S. at 90. Limiting such abstract concepts of collection, analysis, and display of information to a general purpose computer having generic components such as "one or more computer systems," "at least one processing device;" and "computer-readable storage" as recited in Appellant's claims 1 and 43 does not make the abstract concept patent-eligible under 35 U.S.C. § 101. 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." See Alice, 134 S. Ct. at 2358 (concluding claims "simply instruct[ing] the practitioner to implement the abstract idea of 9 Appeal2017-006771 Application 12/840,947 intermediated settlement on a generic computer" not patent eligible); see also Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1333-34 (Fed. Cir. 2012) ("[s]imply adding a 'computer aided' limitation to a claim covering an abstract concept, without more, is insufficient to render [a] claim patent eligible" (internal citation omitted)). Because Appellant's claims 1, 3-5, 7-25, and 43 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. DECISION We affirm the Examiner's rejection of claims 1, 3-5, 7-25, and 43 under 35 U.S.C. § 101. 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 10 Copy with citationCopy as parenthetical citation