Ex Parte KLUMPP et al

Patent Trials and Appeals Board

Jan 2, 2019

13469761 - (D) (P.T.A.B. Jan. 2, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/469,761 05/11/2012 Jeffrey Thomas KLUMPP
74739 7590 01/04/2019
Potomac Law Group, PLLC (Oracle International)
8229 Boone Boulevard
Suite 430
Vienna, VA 22182
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.
T9049-19741US01 7617
EXAMINER
GURSKI, AMANDA KAREN
ART UNIT PAPER NUMBER
3623
NOTIFICATION DATE DELIVERY MODE
01/04/2019 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@potomaclaw.com
bgoldsmith@potomaclaw.com
eofficeaction@appcoll.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JEFFREY THOMAS KLUMPP, JOHN THOMAS LYNCH II,
JONATHAN GRIMM, VLADIMIR ZELEVINSKY, and BENJAMIN
TRAFTON
Appeal2017-007530
Application 13/469,761 1
Technology Center 3600
Before ERIC S. FRAHM, CATHERINE SHIANG, and
NORMAN H. BEAMER, Administrative Patent Judges.
SHIANG, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 1-26, which are all the claims pending in the application.
We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
1 Appellants identify Oracle International Corporation as the real party in
interest. App. Br. 2.
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Application 13/469,761
STATEMENT OF THE CASE
Introduction
According to the Specification, the present invention relates "to a
computer system, and in particular to a computer system that generates web
site analytics." Spec. ,r 2. Claim 1 is exemplary:
1. A non-transitory computer readable medium having
instructions stored thereon that, when executed by a processor, cause the
processor to generate web page analytics, the generate web page analytics
compnsmg:
generating at a server a plurality of e-commerce web pages, each web
page comprising a plurality of products and a plurality of web page sections,
and different values are assigned to different sections of the web page,
wherein each product is displayed in at least one of the sections of the web
page and is a product available for purchase to a user of the e-commerce
web page, wherein the e-commerce web page is displayed on a client device
accessible by the user;
receiving a plurality of selections by a user at the client device of one
or more of the products;
in response to each selection, logging data received from the client
device comprising a selected product and a section of the web page where
the selected product was displayed when it was selected by the user, wherein
the section of the web page where the selected product was displayed is
transmitted from the client device to the server after the product is selected
by the user; and
generating web page analytics from the logged data, wherein the
analytics are based at least on the selected product and the values that
correspond to the section of the web page where the selected product was
displayed.
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Application 13/469,761
References and Rejections2
Claims 1-26 stand rejected under 35 U.S.C. § 101 because they are
directed to patent-ineligible subject matter. Final Act. 6-8.
Claims 1-5, 7-9, 11-13, 15-17, 19-21, and 23-25 stand rejected
under pre-AIA 35 U.S.C. § I03(a) as being unpatentable over Gessner (US
2013/0030908 Al; published January 31, 2013) and Newton (US
2011/0314142 Al; published December 22, 2011 ). Final Act. 9-21.
Claims 6, 10, 14, 18, 22, and 26 stand rejected under pre-AIA 35
U.S.C. § I03(a) as being unpatentable over Gessner, Newton, and
Chickering (US 7,143,075 Bl; issued November 28, 2006). Final Act. 21-
24.
ANALYSIS
35 us.c. § 101
With respect to the Examiner's rejection under 35 U.S.C. § 101, we
disagree with Appellants' arguments, and agree with and adopt the
Examiner's findings and conclusions in (i) the action from which this appeal
is taken and (ii) the Answer to the extent they are consistent with our
analysis below. 3
2 Throughout this opinion, we refer to the (1) Final Rejection dated July 19,
2016 ("Final Act."); (2) Appeal Brief dated December 19, 2016 ("App.
Br."); (3) Examiner's Answer dated February 16, 2017 ("Ans."); and (4)
Reply Brief dated April 17, 2017 ("Reply Br.").
3 To the extent Appellants advance new arguments in the Reply Brief
without showing good cause, Appellants have waived such arguments. See
37 C.F.R. § 41.4I(b)(2).
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The Examiner rejects the claims under 35 U.S.C. § 101 because they
are directed to patent-ineligible subject matter. See Final Act. 6-9; Ans. 4--
6. In particular, the Examiner concludes the claims are directed to the
abstract idea of managing information. See Ans. 4. The Examiner
determines the claims do not identify an inventive concept to transform the
nature of the claims into a patent-eligible application. See Ans. 5.
Appellants argue the Examiner erred. See App. Br. 4--9; Reply Br. 2--4.
Appellants have not persuaded us of error. Section 101 of the Patent
Act provides "[ w ]hoever invents or discovers any new and useful process,
machine, manufacture, or composition of matter, or any new and useful
improvement thereof, may obtain a patent therefor, subject to the conditions
and requirements of this title." 35 U.S.C. § 101. That provision "contains
an important implicit exception: Laws of nature, natural phenomena, and
abstract ideas are not patentable." Alice Corp. Pty. Ltd. v. CLS Bank Int 'l,
134 S. Ct. 2347, 2354 (2014) (quoting Ass 'nfor Molecular Pathology v.
Myriad Genetics, Inc., 133 S. Ct. 2107, 2116 (2013)). According to the
Supreme Court:
[W]e 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, we 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, we 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. . . . We have
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
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significantly more than a patent upon the [ineligible concept]
itself."
Alice Corp., 134 S. Ct. at 2355 (quoting Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 132 S.Ct. 1289, 1294, 1296-98 (2012)).
The Federal Circuit has described the Alice step-one inquiry as
looking at the "focus" of the claims, their "character as a whole," and the
Alice step-two inquiry as looking more precisely at what the claim elements
add-whether they identify an "inventive concept" in the application of the
ineligible matter to which the claim is directed. See Elec. Power Grp., LLC
v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016); Enfzsh, LLC v.
Microsoft Corp., 822 F.3d 1327, 1335-36 (Fed. Cir. 2016); Internet Patents
Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015).
Regarding Alice step one, the Federal Circuit has "treated collecting
information, including when limited to particular content ( which does not
change its character as information), as within the realm of abstract ideas."
Elec. Power, 830 F.3d at 1353 (emphasis added); see also Internet Patents,
790 F.3d at 1348--49; OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359,
1363 (Fed. Cir. 2015); Content Extraction & Transmission LLC v. Wells
Fargo Bank, Nat'! Ass 'n, 776 F.3d 1343, 1347 (Fed. Cir. 2014). "In a
similar vein, we have treated analyzing information [including manipulating
information] by steps people go through in their minds, or by mathematical
algorithms, without more, as essentially mental processes within the
abstract-idea category." Elec. Power, 830 F.3d at 1354 (emphasis added);
see also In re TL! Commc 'ns LLC Patent Litig., 823 F.3d 607, 613 (Fed. Cir.
2016). "And we have recognized that 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
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ancillary part of such collection and analysis." Elec. Power, 830 F.3d at
1354 (emphasis added); see also Ultramercial, Inc. v. Hulu, LLC, 772 F.3d
709, 714--15 (Fed. Cir. 2014).
The rejected claims "fall into a familiar class of claims 'directed to' a
patent-ineligible concept." Elec. Power, 830 F.3d at 1353. Contrary to
Appellants' arguments (App. Br. 4--9; Reply Br. 2--4), we agree with the
Examiner that the claims are similar to the claims of Electric Power, and are
focused on the combination of abstract-idea processes or functions. See
Elec. Power, 830 F.3d at 1354; Ans. 4. For example, claim 1 is directed to
receiving and collecting information ("receiving ... logging ... "), analyzing
and generating information ("generating ... "), and displaying information
(" ... displayed ... "). See Elec. Power, 830 F.3d at 1353. Claims 11 and 19
are similarly directed to receiving and collecting information, analyzing and
generating information, and displaying information. The dependent claims
are directed to similar functions or processes, and Appellants have not
shown such claims are directed to other non-abstract functions or processes.
See claims 2-10, 12-18, and 20-26.
Appellants' attorney argument that the claims "recite a new type of
information" (Reply Br. 3) is unsupported by evidence and unpersuasive.
See In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) ("attorney argument
[is] not the kind of factual evidence that is required to rebut a prima facie
case of obviousness"); Meitzner v. Mindick, 549 F.2d 775, 782 (CCPA 1977)
("Argument of counsel cannot take the place of evidence lacking in the
record."). To the contrary, the claimed "a selected product and a section of
the web page where the selected product was displayed when it was selected
by the user" merely recites a certain information content on a web page-not
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a new type of information as Appellants argue, and Appellants have not
shown such information content renders the claims patent eligible.
Further, Appellants' assertion regarding pre-emption (App. Br. 8-9) is
unpersuasive, because "[w]hile preemption may signal patent ineligible
subject matter, the absence of complete preemption does not demonstrate
patent eligibility .... \·Vhere a patent's claims are deemed only to disclose
patent ineligible subject matter under the Afayo framework, as they are in
this case, preemption concerns are fully addressed and made moot" Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015);
see also OIP, 788 F.3d at 1362---63 ("that the claims do not preempt all price
optimization or may be limited to price optimization in the e-commerce
setting do not make thern any less abstract").
In addition, Appellants' assertion (App. Br. 9; Reply Br. 3) about
McRO, Inc. v. Bandai Namco Games America Inc., 837 F.3d 1299 (Fed. Cir.
2016) is unpersuasive. In McRO, the Court determines:
Claim 1 of the '576 patent is focused on a specific asserted
improvement in computer animation, i.e., the automatic use of
rules of a particular type. . . . It is the incorporation of the
claimed rules, not the use of the computer, that "improved [the]
existing technological process" by allowing the automation of
further tasks ....
Further, the automation goes beyond merely "organizing
[ existing] information into a new form" or carrying out a
fundamental economic practice. The claimed process uses a
combined order of specific rules that renders information into a
specific format that is then used and applied to create desired
results: a sequence of synchronized, animated characters.
McRO, 837 F.3d at 1314--15 (emphases added) (citations omitted).
This case is distinguished from McRO because unlike the claims of
McRO, the rejected claims are not directed to "a specific asserted
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improvement in computer animation," let alone "us[ing] a combined order of
specific rules that renders information into a specific format that is then used
and applied to create desired results: a sequence of synchronized, animated
characters." McRO, 837 F.3d at 1314--15.4
Regarding Alice step two, contrary to Appellants' assertion (App. Br.
4--9; Reply Br. 2--4), Appellants have not shown the claims in this case
require any "inventive concept" or inventive set of components or methods,
or invoke any assertedly inventive programming. Elec. Power, 830 F .3d at
1355.
Further, contrary to Appellants' arguments (App. Br. 4--9; Reply Br.
2--4 ), the claims are similar to the claims of Electric Power, because they do
not require any nonconventional computer, network, or display components,
or even a "non-conventional and non-generic arrangement of known,
conventional pieces," but merely call for performance of the claimed
information collection, analysis, and display functions on generic computer
components and display devices. See Elec. Power, 830 F.3d at 1355; see
also claim 1 (reciting a "non-transitory computer readable medium ... a
processor ... a server ... a client device"); claims 11 and 19 ( each reciting
similar components and devices). The dependent claims call for similar
generic components and devices, and Appellants have not shown such
claims require any non-conventional components or devices. See claims 2-
10, 12-18, and 20-26.
Similar to the claims of Electric Power, the rejected claims specify
4 Appellants' attorney argument that the claimed invention "require[s] a
computer" (App. Br. 6) is unsupported by evidence and unpersuasive. In
any event, Appellants have not shown using a generic computer renders the
claims patent eligible.
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what information is desirable to gather, analyze, and display, but they "do
not include any requirement for performing the claimed functions of
gathering, analyzing, and displaying ... by use of anything but entirely
conventional, generic technology." Elec. Power, 830 F.3d at 1356.
Therefore, similar to the claims of Electric Power, the rejected claims "do
not state an arguably inventive concept in the realm of application of the
information-based abstract ideas." Id. at 1356.
Appellants' argument about the absence of a credible prior art
rejection (App. Br. 7----8; Reply Br. 3---4) is unpersuasive, because a prior art
rejection is determined under 35 U.S.C. § 102 and§ 103, which are different
statutory requirements. As the Supreme Court emphasizes: "[t]he 'novelty'
of any element or steps in a process, or even of the process itself, is of no
relevance in determining whether the subject matter of a claim falls within
the§ 101 categories of possibly patentable subject matter." Diamond v.
Diehr, 450 U.S. 175, 188-89 (1981) (emphasis added). Our reviewing court
further guides that"[ e ]ligibility and novelty are separate inquiries." Two-
Way Media Ltd. v. Comcast Cable Commc 'ns, LLC, 874 F.3d 1329, 1340
(Fed. Cir. 2017).
Appellants cite BASCOM Global Internet Services, Inc. v. AT&T
Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016) (App. Br. 7), but do not
persuasively explain why that case is similar to the present case. In
BASCOM, the court determined that at the pleading stage and construed in
favor of the nonmovant,
[t]he inventive concept described and claimed ... is the
installation of a filtering tool at a specific location, remote from
the end-users, with customizable filtering features specific to
each end user. This design gives the filtering tool both the
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benefits of a filter on a local computer and the benefits of a
filter on the ISP server. BASCOM explains that the inventive
concept rests on taking advantage of the ability of at least some
ISPs to identify individual accounts that communicate with the
ISP server, and to associate a request for Internet content with a
specific individual account.
Id. at 1350 (emphasis added).
The rejected claims are unlike the claims of BASCOMbecause they
are not directed to an "installation of a filtering tool at a specific location,
remote from the end-users, with customizable filtering features specific to
each end user." Id. at 1350. Nor do they "give[] the filtering tool both the
benefits of a filter on a local computer and the benefits of a filter on the ISP
server." Id. In fact, the pending claims do not even recite any "ISP server."
In short, Appellants have not shown the claims, read in light of the
Specification, require anything other than conventional computer, network,
and display technology for collecting, analyzing, and presenting the desired
information. See Elec. Power, 830 F.3d at 1354. Such invocations of
computers and networks are "insufficient to pass the test of an inventive
concept in the application" of an abstract idea and, therefore, do not add
significantly more to that idea. Id. at 1355 (citation omitted).
Because Appellants have not persuaded us the Examiner erred, we
sustain the Examiner's rejection of claims 1-26 under 35 U.S.C. § 101.
35 us.c. § 103
We have reviewed the Examiner's rejection in light of Appellants'
contentions and the evidence of record. We concur with Appellants'
contention that the Examiner erred in determining the cited portions of
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Gessner and Newton collectively teach "wherein the section of the web page
where the selected product was displayed is transmitted from the client
device to the server after the product is selected by the user," as recited in
independent claim 1 (emphasis added). See App. Br. 11-13; Reply Br. 4.
The Examiner finds "Gessner does not explicitly teach" the above
limitation. Final Act. 12. The Examiner then cites Newton's paragraph 105,
but does not specifically map the italicized limitation. See Final Act. 12.
Appellants argue, and we agree, Newton's paragraph 105 does not teach
"after the product is selected by the user," let alone "wherein the section of
the web page where the selected product was displayed is transmitted from
the client device to the server after the product is selected by the user," as
required by claim 1. See App. Br. 12-13.
In response to Appellants' arguments, the Examiner determines "[ t ]he
claim language only requires that after a user makes a selection, data is
logged about the section of the page the product was located, and then web
page analytics are generated." Ans. 6. That determination contradicts claim
1, which requires "wherein the section of the web page where the selected
product was displayed is transmitted from the client device to the server
after the product is selected by the user" ( emphasis added).
Because the Examiner fails to provide sufficient evidence or
explanation to support the rejection, we are constrained by the record to
reverse the Examiner's rejection of claim 1.
Each of independent claims 11 and 19 recites a claim limitation that is
substantively similar to the disputed limitation of claim 1. See claims 11 and
19. Therefore, for similar reasons, we reverse the Examiner's rejection of
independent claims 11 and 19.
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We also reverse the Examiner's rejection of corresponding dependent
claims 2-10, 12-18, and 20-26. Although the Examiner cites an additional
reference for rejecting some dependent claims, the Examiner has not shown
the additional reference overcomes the deficiency discussed above in the
rejection of claim 1.
DECISION
We affirm the Examiner's decision rejecting claims 1-26.
Because we affirm at least one ground of rejection with respect to
each claim on appeal, we affirm the Examiner's decision rejecting claims 1-
23. See 37 C.F.R. § 4I.50(a)(l).
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). See 37
C.F.R. § 41.50(±).
AFFIRMED
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