Ex Parte Rand et al

Patent Trial and Appeal Board

Dec 3, 2018

12130698 (P.T.A.B. Dec. 3, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/130,698 05/30/2008
33438 7590 12/05/2018
TERRILE, CANNATTI & CHAMBERS, LLP
P.O. BOX 203518
AUSTIN, TX 78720
FIRST NAMED INVENTOR
Nahum Rand
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.
T00289 4450
EXAMINER
BARTLEY, KENNETH
ART UNIT PAPER NUMBER
3693
NOTIFICATION DATE DELIVERY MODE
12/05/2018 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):
USPTO@dockettrak.com
tmunoz@tcciplaw.com
heather@tcciplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NAHUM RAND and VINEET JOSHI
Appeal2017---004011
Application 12/130,698
Technology Center 3600
Before MURRIEL E. CRAWFORD, ANTON W. PETTING, and
PHILIP J. HOFFMANN, Administrative Patent Judges.
PETTING, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE 1
Nahmn Rand and Vineet Joshi (Appellants) seek review under
35 U.S.C. § 134 ofa final rejection of claims 1-3, 7, 9-16, and 22-24, the
only claims pending in the application on appeal. We have jurisdiction over
the appeal pursuant to 35 U.S.C. § 6(b ).
1 Our decision will make reference to the Appellants' Appeal Brief ("App.
Br.," filed August 15, 2016) and Reply Brief ("Reply Br.," filed January 6,
2017), and the Examiner's Answer ("Ans.," mailed November 29, 2016) and
Final Action ("Final Act.," mailed April 21, 2016).
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Application 12/130,698
The Appellants invented monetization of website generated sales at
brick and mortar locations. Specification para. 2.
An understanding of the invention can be derived from a reading of
exemplary claim 16, which is reproduced below (bracketed matter and some
paragraphing added).
16. A method for monetizing website interactions, the
method comprising:
[ 1] storing on a storage medium a business establishment
profile for each of a plurality of business establishments
wherein each business establishment profile includes a business
establishment location and product information for goods
offered at each business establishment;
[2] maintaining a financial database wherein said
financial database includes merchant financial transactional
data and individual financial transactional data;
[3] conducting on a computing device an inquiry for
goods in a desired geographic location;
[ 4] returning to the computing device for display on a
display device a plurality of business establishments matching
the inquiry; and
[ 5] generating a token associating each of the plurality of
business establishments with the inquiry, said token being
correlated with the financial database.
Claims 1-3, 7, 9-16, and 22-24 stand rejected under 35 U.S.C. § 101
as directed to a judicial exception without significantly more.
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ISSUES
The issues of eligible subject matter tum primarily on whether the
claims recite more than abstract conceptual advice of what a computer is to
provide without implementation details.
ANALYSIS
Method claim 16 recites storing business profiles, maintaining a
financial transaction database, conducting an inquiry, retrieving and
displaying results from the inquiry, and generating data in the form of a
token that is given some meaning. Thus, claim 16 recites storing, retrieving,
analyzing, displaying, and generating data. None of the limitations recite
implementation details for any of these steps, but instead recite functional
results to be achieved by any and all possible means. Data storage, retrieval,
analysis, displaying, and generation are all generic, conventional data
processing operations to the point that they are themselves concepts awaiting
implementation details. The sequence of data storing-retrieving-analyzing-
displaying-generating is equally generic and conventional. The ordering of
the steps is therefore ordinary and conventional. The remaining claims
merely describe process parameters, with no implementation details.
The Supreme Court
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, []
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,
[] consider the elements of each claim both individually and "as
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an ordered combination" to determine whether the additional
elements "transform the nature of the claim" into a patent-
eligible application. [The Court] 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 significantly more than a
patent upon the [ineligible concept] itself."
Alice Corp., Pty. Ltd. v CLS Bank Intl, 134 S. Ct. 2347, 2355 (2014)
(citing Mayo Collaborative Services v. Prometheus Laboratories, Inc.,
566 U.S. 66 (2012)).
To perform this test, we must first determine whether the claims at
issue are directed to a patent-ineligible concept. The Examiner finds the
claims are directed to series of steps instructing how to correlate a website
inquiry for goods with a financial transaction, which is a fundamental
economic practice. Final Act. 10.
Although the Court in Alice made a determination as to what the
claims were directed, we find that this case's claims themselves and the
Specification provide enough information to inform one as to what they are
directed.
The preamble to claim 16 recites that it is a method for monetizing
website interactions. The steps in claim 16 result in generating a token
associating each of a plurality of business establishments with an inquiry,
the token being correlated with a financial database. The Specification at
paragraph 2 recites that the invention relates to monetization of website
generated sales at brick and mortar locations. Thus, all this evidence shows
that claim 16 is directed to correlating a website inquiry for goods with a
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financial transaction, i.e., sales analysis. This is consistent with the
Examiner's finding.
It follows from prior Supreme Court cases, and Bilski (Bilski v
Kappas, 561 U.S. 593 (2010)) in particular, that the claims at issue here are
directed to an abstract idea. Like the risk hedging in Bilski, the concept of
sales analysis is a fundamental economic practice long prevalent in our
system of commerce. The use of sales analysis is also a building block of
ingenuity in financial analysis. Thus, sales analysis, like hedging, is an
"abstract idea" beyond the scope of§ 101. See Alice Corp. Pty. Ltd. at 2356.
As in Alice Corp. Pty. Ltd., we need not labor to delimit the precise
contours of the "abstract ideas" category in this case. It is enough to
recognize that there is no meaningful distinction in the level of abstraction
between the concept of risk hedging in Bilski and the concept of sales
analysis at issue here. Both are squarely within the realm of "abstract ideas"
as the Court has used that term. See Alice Corp. Pty. Ltd. at 2357.
Further, claims involving data collection, analysis, and display are
directed to an abstract idea. Elec. Power Grp. v. Alstom S.A., 830 F.3d 1350,
1353 (Fed. Cir. 2016) (holding that "collecting information, analyzing it, and
displaying certain results of the collection and analysis" are "a familiar class
of claims 'directed to' a patent ineligible concept"); see also In re TL!
Commc 'ns LLC Patent Litig., 823 F.3d 607, 611 (Fed. Cir. 2016);
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093-94 (Fed. Cir.
2016). Claim 16, unlike the claims found non-abstract in prior cases, uses
generic computer technology to perform data storage, retrieval, analysis,
displaying, and generation and does not recite an improvement to a
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particular computer technology. See, e.g., McRO, Inc. v. Bandai Namco
Games Am. Inc., 837 F.3d 1299, 1314--15 (Fed. Cir. 2016) (finding claims
not abstract because they "focused on a specific asserted improvement in
computer animation"). As such, claim 16 is directed to the abstract idea of
storing, retrieving, analyzing, displaying, and generating data.
The remaining claims merely describe process parameters. We
conclude that the claims at issue are directed to a patent-ineligible concept.
The introduction of a computer into the claims does not alter the
analysis at Mayo step two.
[T]he mere recitation of a generic computer cannot transform a
patent-ineligible abstract idea into a patent-eligible invention.
Stating an abstract idea "while adding the words 'apply it"' is
not enough for patent eligibility. Nor is limiting the use of an
abstract idea "'to a particular technological environment."'
Stating an abstract idea while adding the words "apply it with a
computer" simply combines those two steps, with the same
deficient result. Thus, if a patent's recitation of a computer
amounts to a mere instruction to "implement[ t ]" an abstract
idea "on ... a computer," that addition cannot impart patent
eligibility. This conclusion accords with the preemption
concern that undergirds our § 101 jurisprudence. Given the
ubiquity of computers, wholly generic computer
implementation is not generally the sort of "additional
feature[ e ]" that provides any "practical assurance that the
process is more than a drafting effort designed to monopolize
the [ abstract idea] itself."
Alice Corp. Pty. Ltd., 134 S. Ct. at 2358 (citations omitted).
"[T]he relevant question is whether the claims here do more than
simply instruct the practitioner to implement the abstract idea [] on a generic
computer." Alice Corp. Pty. Ltd., 134 S. Ct. at 2359. They do not.
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Taking the claim elements separately, the function performed by the
computer at each step of the process is purely conventional. Using a
computer to store, retrieve, analyze, display, and generate data amounts to
electronic data query and retrieval----one of the most basic functions of a
computer. All of these computer functions are well-understood, routine, and
conventional activities previously known to the industry. See Elec. Power
Grp. v. Alstom S.A., supra. Also see In re Katz Interactive Call Processing
Patent Litigation, 639 F.3d 1303, 1316 (Fed. Cir. 2011) ("Absent a possible
narrower construction of the terms 'processing,' 'receiving,' and 'storing,' ..
. those functions can be achieved by any general purpose computer without
special programming"). In short, each step does no more than require a
generic computer to perform generic computer functions. As to the data
operated upon, "even if a process of collecting and analyzing information is
'limited to particular content' or a particular 'source,' that limitation does
not make the collection and analysis other than abstract." SAP America Inc.
v. InvestPic LLC, 898 F.3d 1161, 1168 (Fed. Cir. 2018).
Considered as an ordered combination, the computer components of
Appellants' method add nothing that is not already present when the steps
are considered separately. The sequence of data storing-retrieving-
analyzing-displaying-generating is equally generic and conventional or
otherwise held to be abstract. See Ultramercial, Inc. v. Hulu, LLC, 772 F .3d
709, 715 (Fed. Cir. 2014) (sequence of receiving, selecting, offering for
exchange, display, allowing access, and receiving payment recited an
abstraction), Inventor Holdings, LLC v. Bed Bath & Beyond, Inc., 876 F.3d
1372, 1378 (Fed. Cir. 2017) (sequence of data retrieval, analysis,
modification, generation, display, and transmission), Two-Way Media Ltd. v.
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Comcast Cable Communications, LLC, 874 F.3d 1329, 1339 (Fed. Cir.
2017) (sequence of processing, routing, controlling, and monitoring). The
ordering of the steps is therefore ordinary and conventional.
Viewed as a whole, Appellants' method claims simply recite the
concept of sales analysis as performed by a generic computer. To be sure,
the claims recite doing so by advising one to respond to a sales query with a
data token that then is imparted meaning in the human mind. But this is no
more than abstract conceptual advice on the parameters for such sales
analysis and the generic computer processes necessary to process those
parameters, and do not recite any particular implementation.
The method claims do not, for example, purport to improve the
functioning of the computer itself. Nor do they effect an improvement in
any other technology or technical field. The 18 pages of specification do not
bulge with disclosure, but only spell out different generic equipment2 and
parameters that might be applied using this concept and the particular steps
such conventional processing would entail based on the concept of sales
analysis under different scenarios. They do not describe any particular
improvement in the manner a computer functions. Instead, the claims at
issue amount to nothing significantly more than an instruction to apply the
abstract idea of sales analysis using some unspecified, generic computer.
2 The Specification describes the computer as a personal computer, personal
data assistant, cellular telephone, or any other device capable of interfacing
with a wide area network such as the Internet. Spec. para. 22.
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Under our precedents, that is not enough to transform an abstract idea into a
patent-eligible invention. See Alice Corp. Pty. Ltd. at 2360.
As to the structural claims, they
are no different from the method claims in substance. The
method claims recite the abstract idea implemented on a generic
computer; the system claims recite a handful of generic
computer components configured to implement the same idea.
This Court has long "warn[ ed] . . . against" interpreting
§ 101 "in ways that make patent eligibility 'depend simply on
the draftsman's art.'
Alice Corp. Pty. Ltd. at 2360.
We are not persuaded by Appellants' argument that
The current rejection does exactly what the CAFC warns
against: Rather than analyzing the claims as a whole, in light of
the specification to determine whether the invention improves
the functioning of a computer of an existing technological
process or of a technological field, the rejection overgeneralizes
the claims, then uses that overgeneralization to dismissively
declare the invention "abstract", effectively bypassing a true
step one analysis and proceeding directly to step two. On the
contrary, the use of a token as claimed-a specific
implementation to solve a long-felt problem-improves the
technological process correlating two otherwise disparate
events to present a solution to a problem. Ironically, use of this
token was recognized during examination as a novel feature of
the claimed invention, yet this innovation was immediately
dismissed in its generalization as an abstract idea.
App. Br. 16. As we determined supra, the claims as a whole recite primitive
conventional computer operations that result in creating a data token
representing some correlation discernable only in the human mind. But
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Application 12/130,698
interpretation of data 3 is in the mind of the beholder and given no patentable
weight. See In re Bernhart, 417 F.2d 1395, 1399 (CCPA 1969).
Appellants' contention that "the use of a token as claimed-a specific
implementation to solve a long-felt problem-improves the technological
process correlating two otherwise disparate events to present a solution to a
problem" is not commensurate with the scope of the claims as the claims
only generate and do not recite any technological use of the tokens. As to
novelty, "A claim for a new abstract idea is still an abstract idea. The search
for a § 101 inventive concept is thus distinct from demonstrating § 102
novelty." Synopsys, Inc. v. Mentor Graphics Corporation, 839 F.3d 1138,
1151 (Fed. Cir. 2016).
We are not persuaded by Appellants' argument that the claims are
supported by Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir.
2016). The claims differ from those found patent eligible in Enfzsh, where
the claims were "specifically directed to a self-referential table for a
computer database." 822 F.3d 1327, 1337 (Fed. Cir. 2016). The claims
thus were "directed to a specific improvement to the way computers
operate" rather than an abstract idea implemented on a computer. Id. at
1336. Here, by contrast, the claims are not directed to an improvement
in the way computers operate. Though the claims purport to improve
the accuracy of correlating sales events, our reviewing court has held that
speed and accuracy increases stemming from the ordinary capabilities of a
3 Data per se is an arbitrary string of binary digits dependent on encoding
scheme, and has no intrinsic meaning unless imposed by some technological
limitation.
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general purpose computer "do[] not materially alter the patent eligibility
of the claimed subject matter." Bancorp Servs., L.L. C. v. Sun Life
Assurance Co. of Can. (US.), 687 F.3d 1266, 1278 (Fed. Cir. 2012).
Instead, the claims are more analogous to those in FairWarning, 839 F.3d
1089 (Fed. Cir. 2016), wherein claims reciting "a few possible rules to
analyze audit log data" were found directed to an abstract idea because they
asked "the same questions ( though perhaps phrased with different words)
that humans in analogous situations detecting fraud have asked for
decades." 839 F.3d at 1094, 1095. Although Appellants contend that the
recited token "associates not only the inquiry to the location of a retailer, but
also ties the very individual who initiated the inquiry to the transaction
conducted at the physical location at a specific point in time" (Reply Br.,
id.), the claims do not recite how such an association is technologically
created, but only recite the result to be achieved by any and all means.
The patent, however, does not disclose any particular
mechanism for wirelessly streaming content to a handheld
device. The specification describes the function of streaming
content to a wireless device, but not a specific means for
performing that function. Claim 14, in tum, recites (1) a
"media managing system" that maintains a library of content,
(2) a "collection of instructions" that are "operable when
executed" by a handheld wireless device to request
streaming delivery of the content, and (3) a "network based
delivery resource" that retrieves and streams the requested
content to the handheld device. At that level of generality, the
claims do no more than describe a desired function or
outcome, without providing any limiting detail that confines
the claim to a particular solution to an identified problem. The
purely functional nature of the claim confirms that it is
directed to an abstract idea, not to a concrete embodiment of
that idea.
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Affinity Labs of Texas, LLC v. Amazon.com Inc., 838 F.3d 1266, 1269
(2016).
We are not persuaded by Appellants' argument that
the claimed invention clearly delineates meaningful limits to
improve data management, including specific predetermined
geographical distances from specific locations of interest from
particular inquiries, as well as predetermined periods of time
from the instances when these inquiries were conducted, all by
using a token. These limits are substantial significant
"improvement[ s] to computer functionality", because they
significantly improve the computing processes involved by
limiting (narrowing) the scope of the inquiries: Specifying
stringent limits on the resultant transaction enables the assigned
processes to bound their actions and process computational
usage to correlate a specific query to a transaction taking place
at a physical location, all within a defined region. Otherwise,
inquiry scope would be unbounded and-without Appellant's
invention-impossible.
Reply Br. 18. First, narrowing the criteria used in some association, like
narrowing criteria in a query, is itself an abstract idea. Second, applying
criteria to any data or process is applicable to both manual and automated
processes, and is not unique to technological processes. Further, reducing
processing time by simply reducing the amount of data processed is
intuitive, abstract, commonplace, and a virtual tautology. Appellants'
arguments are an admission that the very purpose of the token is to reduce
the amount of data associated, and therefore processed.
CONCLUSIONS OF LAW
The rejection of claims 1-3, 7, 9-16, and 22-24 under 35 U.S.C.
§ 101 as directed to a judicial exception without significantly more is proper.
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DECISION
The rejection of claims 1-3, 7, 9-16, and 22-24 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). See 37 C.F.R.
§ 1.136(a)(l)(iv) (2011).
AFFIRMED
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