Ex Parte King

Patent Trial and Appeal Board

Sep 21, 2018

12840947 (P.T.A.B. Sep. 21, 2018)

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
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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.
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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.
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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.
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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
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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
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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
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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
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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
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