Ex Parte LEMPHERS et al

Patent Trial and Appeal Board

Dec 19, 2017

13830077 (P.T.A.B. Dec. 19, 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.
13/830,077 03/14/2013 David Jonathan LEMPHERS 034250-0437006 1756
909 7590
Pillsbury Winthrop Shaw Pittman, LLP
PO Box 10500
McLean, VA 22102
EXAMINER
BRADY, MARIE P.
ART UNIT PAPER NUMBER
3681
NOTIFICATION DATE DELIVERY MODE
12/21/2017 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):
docket_ip@pillsburylaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID JONATHAN LEMPHERS, SHREYAS KARNIK,
CHRISTOPHER COUHAULT, and ALEXANDROS SUVACIOGLU
Appeal 2016-003127
Application 13/830,077
Technology Center 3600
Before ANTON W. FETTING, BRUCE T. WIEDER, and
AMEE A. SHAH, Administrative Patent Judges.
SHAH, Administrative Patent Judge.
DECISION ON APPEAL1
The Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner’s
final decision rejecting claims 21—40. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.
1 Throughout this opinion, we refer to the Appellants’ Appeal Brief
(“Appeal Br.,” filed Aug. 25, 2015), Reply Br. (“Reply Br.,” filed Jan. 20,
2016), and Specification (“Spec.,” filed Mar. 14, 2013), and to the
Examiner’s Answer (“Ans.,” mailed Nov. 20, 2015) and Final Office Action
(“Final Act.,” mailed Mar. 25, 2015).
2 According to the Appellants, the real party in interest is RetailMeNot, Inc.
Appeal Br. 2.
Appeal 2016-003127
Application 13/830,077
STATEMENT OF THE CASE
The Appellants’ invention “relates generally to the field of online
shopping, data manipulation, and publication of online deals and coupons”
and, more particularly, to “generat[ing] online electronic deal summaries in
a clear and useful manner.” Spec. Tflf 1, 13.
Claims 21 and 31 are the independent claims on appeal. Claim 21
(Appeal Br. 13 (Claims App.)) is illustrative of the subject matter on appeal,
and is reproduced below:
21. A method, comprising:
sending, by one or more processors, to an affiliate network
server, via the Internet, an application program interface request
for primary deal content, the primary deal content describing a
deal or coupon, wherein the affiliate network server hosts deals
or coupons provided by a plurality of advertisers for electronic
distribution to consumers via a plurality of publishers;
receiving, by one or more processors, via the Internet,
responsive primary deal content from the affiliate network
server;
parsing, by one or more processors, deal data from the
received primary deal content, the deal data including structured
data describing a plurality of attributes of the deal or coupon;
composing, by one or more processors, a request to a third
party web server for secondary deal content, the request
including keywords about the deal or coupon, the third party web
server being a different server from the affiliate network server
from which the primary deal content was received;
sending, by one or more processors, via the Internet, the
composed request for secondary deal content to the third party
web server;
receiving, by one or more processors, via the Internet,
responsive secondary deal content from the third party web
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Application 13/830,077
server, wherein the secondary deal content includes an image or
text relating to the deal or coupon; and
storing, with one or more processors, a deal summary,
wherein the deal summary includes both at least some of the deal
data from the affiliate network server and at least some of the
image or text from the third party web server.
THE REJECTION
Claims 21—40 stand rejected under 35U.S.C. § 101 as being directed
to non-statutory subject matter.3
ANALYSIS
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. CLS Bank Inti, 134 S. Ct. 2347, 2354 (2014) (quoting Assn for
Molecular Pathology v. Myriad Genetics, Inc., 133 S. Ct. 2107, 2116
(2013)).
The Supreme Court in Alice reiterated the two-step framework, set
forth previously in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66, 75—77 (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
3 The rejection under 35 U.S.C. § 112 of claims 29 and 39 has been
previously withdrawn. See Advisory Action mailed June 3, 2015.
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Application 13/830,077
issue are directed to one of those patent-ineligible concepts.” Id. (citing
Mayo, 566 U.S. at 76—79) (emphasis added). If so, the second step is to
consider the elements of the claims “individually and ‘as an ordered
combination”’ to determine whether the additional elements ‘“transform the
nature of the claim’ into a patent-eligible application.” Id. (quoting Mayo,
566 U.S. at 78-79).
In other words, the second step is to “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.’” Id. (alteration in original) (quoting
Mayo, 566 U.S. at 72—73). The Court acknowledged in Mayo, that “all
inventions at some level embody, use, reflect, rest upon, or apply laws of
nature, natural phenomena, or abstract ideas.” Mayo, 566 U.S. at 71. 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 Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1336 (Fed.
Cir. 2016).
Turning to the first step of the Alice framework, the Examiner
determines that the claims are directed to the abstract idea of preparing
online detailed deal summaries, a fundamental economic practice. Final
Act. 4; see also Ans. 3^4. The Examiner considers “[a]ll claims and all
claim elements” (Ans. 3) and clearly indicates the abstract idea. As such, we
do not find persuasive of Examiner error the Appellants’ argument that “the
Examiner has not adequately specified an abstract idea to which the claims
are directed.” Appeal Br. 7; see also id. at 6.
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Application 13/830,077
Independent claim 21 recites a method comprising the steps of
sending a request for data describing a primary deal, receiving responsive
primary deal data, parsing the data, composing a request for data describing
a secondary deal, sending the composed request, receiving responsive
secondary deal data, and storing deal summary data. Appeal Br. 13 (Claims
App.)). Independent claim 31 recites a system comprising a processor and
memory with instructions for the processor to execute the method of
claim 21. Id. at 16. Dependent claims 22—30 and 32 40 recite limitations
elaborating the method of claim 21, and executed in claim 31, by further
defining the location/owner of the third party web server, further defining
the steps of sending the request for secondary deal data, receiving responsive
secondary deal data, and storing the deal summary data, and further defining
the secondary deal data. Id. at 13—18. The Specification provides that the
invention “relates generally to the field of online shopping, data
manipulation, and publication of online deals and coupons.” Spec. 11.
Thus, we determine that the claims are directed to the abstract idea of
creating and storing online deal summaries, an idea of itself and method of
organizing human activity.4
We find unpersuasive the Appellants’ arguments that the Examiner’s
rejection is in error because the Examiner has not established that providing
details summaries is a fundamental economic practice. Reply Br. 3; see also
Appeal Br. 8. We are aware of no controlling authority that requires that
4 We note that “[a]n abstract idea can generally be described at different
levels of abstraction.” Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240
(Fed. Cir. 2016). The Board’s “slight revision of its abstract idea analysis
does not impact the patentability analysis.” Id. at 1241.
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Application 13/830,077
“[t]he claims must be compared to an abstract idea recognized by courts”
(Appeal Br. 7) or other evidence to support a determination that a claim is
directed to an abstract idea or a fundamental economic practice. There is
also no controlling authority that requires that the Examiner’s analysis refer
to the actual claim language (see id. at 6—7) in determining that the claims
are directed to an abstract idea.5 See Alice, 134 S. Ct. at 2355—57; see also
Enfish, 822 F.3dat 1335 (the directed to inquiry considers the claims in light
of the Specification and on “their character as a whole”).
Nonetheless, we note that the abstract idea here is similar to ones our
reviewing court has deemed ineligible. See Elec. Power Group, LLC v.
Alstom S.A., 830 F.3d. 1350, 1353 (Fed. Cir. 2016) (collecting, analyzing,
and displaying information, including when limited to particular content), In
re TLI Communications LLC Patent Litigation, 823 F.3d 607, 613 (Fed. Cir.
2016) (“classifying and storing digital images in an organized manner”),
Evolutionary Intelligence LLC v. Sprint Nextel Corp., 677 F. App'x 679, 680
(Fed. Cir. 2017), cert, denied, No. 17-609, 2017 WF 4811478 (U.S. Dec. 4,
2017) (“selecting and sorting information by user interest or subject
matter”), and Cyberfone Sys., LLC v. CNN Interactive Grp., Inc.,
558 F. App'x 988, 992 (Fed. Cir. 2014) (organizing, storing, and transmitting
information is well-established abstract idea). Here, the claims involve
5 We note that Office guidelines are not legal requirements, and regardless of
how closely the Examiner adheres to such guidelines (or not), we still must
heed the precedent set by our controlling courts. Intellectual Ventures I LLC
v. Erielndem. Co., No. 2017-1147, 2017 WF 5041460, at *4 (Fed. Cir. Nov.
3, 2017); In re Fisher, 421 F.3d 1365, 1372 (Fed. Cir. 2005) (“The MPEP
and Guidelines ‘are not binding on this court’”); MPEP, Foreword (“The
Manual does not have the force of law or the force of the rules in Title 37 of
the Code of Federal Regulations”).
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nothing more than sending, receiving, parsing, composing, and storing data
of a specific content and/or from a specific source without any particular
inventive technology — an abstract idea. See Electric Power, 830 F.3d
at 1354.
We find also unpersuasive of Examiner error the Appellants’
argument that “the claims are patent eligible for the reasons articulated by
the Federal Circuit in DDR Holdings, LLC v. Hotels.com, L.P., Appeal No.
2013-1505, (Fed. Cir. Dec. 5, 2014).” Appeal Br. 8; see also Reply Br. 4.
In DDR Holdings, 773 F.3d 1245, 1257, the Federal Circuit determined that
the claims addressed the problem of retaining website visitors who, if
adhering to the routine, conventional functioning of Internet hyperlink
protocol, would be transported instantly away from a host’s website after
clicking on an advertisement and activating a hyperlink. The Federal
Circuit, thus, held that the claims were directed to statutory subject matter
because they claim a solution “necessarily rooted in computer technology in
order to overcome a problem specifically arising in the realm of computer
networks.” DDR Holdings, 773 F.3d at 1257. The court cautioned that “not
all claims purporting to address Internet-centric challenges are eligible for
patent,” and noted that in the claims at issue in DDR Holdings, the computer
network was not “operating in its normal, expected manner.” Id. at 1258.
In contrast, there is no indication here that the claimed invention
claims a solution “necessarily rooted in computer technology in order to
overcome a problem specifically arising in the realm of computer networks.”
Although the Appellants argue that “[t]he claimed technique solves
problems that arise when affiliate network server data feeds are leveraged to
find and extract supplemental content from third party servers” (Appeal
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Br. 8), the Appellants do not identify what specific problems that “have no
analog in the pre-Internet world” (id.) are being addressed. The
Specification discusses that differences between networks from which
publishers can access content include quality, content and structure,
freshness, reliability, technical accessibility, commission structure and
terms, and uptime. Spec. 19. Prior art systems “place[] the burden of
sorting, verifying and curating the data on the publishers,” which can be
costly. Id. 111. Asa consequence, publishers may not sort, optimize,
enhance, or verily content. Id. Further, prior art systems do not consider the
plurality of networks and natures of commissions. Id. 112. Thus, the
invention meets publishers’ priorities, such as “maximizing commissions,”
“reducing payout scheduling, and favoring advertisers and affiliate network
with whom the publishers have a good relationship.” Id. 113. The prior art
problems of cost, optimization, enhancements, veracity, and commission
payouts are not technical problems, but business problems that existed prior
to the Internet. Although the field of the invention is the Internet, the
problems are not one unique to the Internet or computers.
Turning to the second step of the Alice framework, we find supported
and adopt the Examiner’s determination that the elements of the claims do
not amount to significantly more than the abstract idea because they are “no
more than: (i) mere instructions to implement the idea on a computer, and/or
(ii) recitation of generic computer structure that serves to perform generic
computer functions that are well-understood, routine, and conventional
activities previously known to the pertinent industry.” Final Act. 4; see also
Ans. 7. The Specification supports this view in describing a generic
computer with a processor, input/output component, and memory/storage
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Application 13/830,077
module, generic computer servers, and a generic network. See Spec. Tflf 34,
37—42. The Appellants do not provide adequate evidence to the contrary.
And there is no further specification of particular technology for performing
the steps. See Affinity Labs, 838 F.3d at 1263; see also Enfish, 822 F.3d.
at 1336 (focusing on whether the claim is “an improvement to the computer
functionality itself, not on economic or other tasks for which a computer is
used in its ordinary capacity.”).
We are not persuaded by the Appellants’ arguments that the claims
are significantly more than the abstract idea because the “ordered
combination of elements adds significantly more to the alleged abstract idea
of ‘preparing a detailed deal summary.’” Appeal Br. 9; see also Reply Br. 5.
To the extent the Appellants argue that the Examiner does not establish a
prima facie case because the Examiner does not “establish that the claim
elements, as an ordered combination, fail to add significantly more to the
alleged abstract idea” {id.), the Federal Circuit has held that the USPTO
carries its procedural burden of establishing a prima facie case when its
rejection satisfies the requirements of 35 U.S.C. § 132 by notifying the
applicant of the reasons for rejection, “together with such information and
references as may be useful in judging of the propriety of continuing the
prosecution of [the] application.” See In re Jung, 637 F.3d 1356, 1362 (Fed.
Cir. 2011). Here we find that the Examiner has set forth the statutory basis
of the rejection in a sufficiently articulate and informative manner as to meet
the notice requirement of § 132 as to why the claims are patent-ineligible.
Id.; see also Chester v. Miller, 906 F.2d 1574, 1578 (Fed. Cir. 1990)
(Section 132 “is violated when a rejection is so uninformative that it
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Application 13/830,077
prevents the applicant from recognizing and seeking to counter the grounds
for rejection”).
To the extent the Appellants argue that, when considering the
elements of the claims as an ordered combination, they transform the claims
into a patent-eligible application (see Appeal Br. 9-10), we disagree. As
noted above, the Specification supports the view that the steps of sending,
receiving, parsing, composing, and storing data are performed by generic
components operating in their ordinary capacities. As the Appellants note,
“one can prepare a deal detailed deal summary, with a computer, without
interfacing with a third party web server.” Id. at 10. The Appellants do not
show how adding a third web server improves the technology or the
functioning of the processor or server itself or leads to the processor
operating in a technically unconventional manner.
Thus, we sustain the Examiner’s rejection under 35 U.S.C. § 101 of
claims 21—40.
DECISION
The Examiner’s rejection of claims 21—40 under 35 U.S.C. § 101 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)(l)(iv).
AFFIRMED
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