Ex Parte Sherr et alDownload PDFPatent Trial and Appeal BoardMar 16, 201712262813 (P.T.A.B. Mar. 16, 2017) Copy Citation 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. 12/262,813 10/31/2008 Daniel D. Sherr 39961-0055001 6920 20985 7590 03/20/2017 FISH & RICHARDSON P.C. (SD) P.O. BOX 1022 MINNEAPOLIS, MN 55440-1022 EXAMINER ELKASSABGI, ZAHRA ART UNIT PAPER NUMBER 3623 NOTIFICATION DATE DELIVERY MODE 03/20/2017 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): PATDOCTC@fr.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte DANIEL D. SHERR, MARY RAINER STEWART, DEBRA L. DONOHUE, LUCY MILLER CLARK, EMILY A. WESTFALL, KAREN F. KULA, THERESE MULVEY, CHRIS KAUL, ALIREZA JAHAN PARVAR, ERIN E. O’LOUGHLIN, STEVE WORONA, NANCY E. CURMI, and KAREN STRNAD Appeal 2014-006433 Application 12/262,813 Technology Center 3600 Before HUBERT C. LORIN, NINA L. MEDLOCK, and SCOTT C. MOORE, Administrative Patent Judges. MOORE, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35U.S.C. § 134 from the final rejection of claims 1—11, which are all of the pending claims.1 We have jurisdiction under 35 U.S.C. § 6. We REVERSE and enter a NEW GROUND OF REJECTION. 1 Appellants state that the real party in interest is “Valassis Communications, Inc.” Appeal Br. 1. Appeal 2014-006433 Application 12/262,813 Claimed Subject Matter The claims are directed to a computer—implemented, automated media planning method and system. Claim 1, reproduced below (with bracketed references added), is illustrative of the claimed subject matter: 1. An automated computer system for scoring the effectiveness of a number of media options and comprising a computer having a central processing unit (CPU) for executing machine instructions and a memory for storing machine instructions that are to be executed by the CPU, the machine instructions when executed by the CPU implement the following functions: [la] receiving a client objective for a media plan for advertising a number of products and/or services, the client objective being selected from a plurality of discrete objectives; [lb] receiving a consumer purchasing frequency for the number of products and/or services, the consumer purchasing frequency being selected from a plurality of consumer purchasing frequency options; [lc] receiving a plurality of media product options; and [ld] scoring the effectiveness of each of the plurality of media product options based on the client objective and the consumer purchasing frequency to obtain a value for each of the plurality of media product options. References and Rejections The Examiner relies on the following references in rejecting the claims on appeal: Tripp US 2003/0004787 A1 Jan. 2,2003 House US 2003/0229536 A1 Dec. 11,2003 Claims 1—11 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over House and Tripp. Final Act. 19 (mailed May 22, 2013). 2 Appeal 2014-006433 Application 12/262,813 ANALYSIS The Examiner and Appellants disagree as to the meaning of the limitation “receiving a consumer purchasing frequency for the number of products and/or services,” which is recited in claim 1 and incorporated by way of dependence into claims 2—11. The Examiner interprets this limitation as referring (in either absolute or relative terms) to the frequency with which a particular consumer purchases particular goods and/or services. See Ans. 4—5. Based on this interpretation, the Examiner finds that Tripp discloses, teaches, or suggests this limitation. In particular, the Examiner cites portions of Tripp that describe retrieving information regarding particular individuals from a database that stores data regarding the product (or service) purchase and/or usage patterns of various individuals. See Ans. 5—7 (citing Tripp || 31—35); Final Act. 5—7, 20 (citing Tripp || 31—35). In contrast, Appellants interpret the limitation “receiving a consumer purchasing frequency for the number of products and/or services” as being “a classification/categorization that may be applied generally to a client’s products or services that indicates the general frequency with which consumers typically purchase the client’s products or services.” Appeal Br. 3. In other words, Appellants interpret this claim limitation as referring to a characteristic of products and/or services (i.e., the general frequency with which the products/services are purchased), not a characteristic of a particular consumer. See id. at 3^4. Appellants then argue that Tripp does not disclose, teach, or suggest this claim limitation because Tripp “merely discloses identifying specific individuals open to purchasing a particular product offering marketed to the individual,” which is “a far cry from 3 Appeal 2014-006433 Application 12/262,813 categorically identifying the typical frequency with which consumers in general purchase the kind/type of product or service marketed.” Id. at 4—5. We construe the disputed claim language in order to resolve this dispute. Claim limitation la recites the function of “receiving a client objective for a media plan for advertising a number of products and/or services, the client objective being selected from a plurality of discrete objectives.” (Emphasis added.) Thus, the term “a number of products and/or services” refers to the products and/or services to be advertised. Claim limitation lb recites the function of “receiving a consumer purchasing frequency for the number of products and/or services, the consumer purchasing frequency being selected from a plurality of consumer purchasing frequency options.” Limitation lb thus requires receiving one of a plurality of “consumer purchasing frequency options” for “the number of products and/or services” (i.e., the products and/or services to be advertised). Claim 3, which depends from claim 1, further recites that the “plurality of consumer purchasing frequency options is a group consisting of ritual, reminder, research and consumer packaged goods.” Thus, “ritual, reminder, research, and consumer packaged goods” are each a type of “consumer purchasing frequency,” as that term is used in claim limitation lb. We now turn to the Specification for further clarification concerning the meaning of the claim language. Page 31 of the Specification describes the process of “determining a consumer purchasing frequency for a client” (i.e., for a potential advertiser). Spec. 31:6—7. The Specification then provides that “[n]on-limiting examples of consumer purchasing frequencies include ritual, reminder, research[,] and 4 Appeal 2014-006433 Application 12/262,813 consumer packaged goods (CPG).” Id. at 31:7—8. In particular, the Specification states: In one or more embodiments, the ritual consumer purchasing frequency includes those retailers who sell goods and/or services that a consumer may utilize relatively often, such as numerous times per month, without giving much thought to their specific choice of such goods and/or services. Non-limiting examples of clients, i.e., retailers, which may fall into the ritual consumer purchasing frequency include dry cleaners, grocery stores, packaged goods retailers, quick service restaurants and video stores. In one or more embodiments, the reminder consumer purchasing frequency includes those retailers who sell goods and/or services that a consumer may utilize periodically, although with a relative low frequency. Non-limiting examples of retailers that may fall into the reminder consumer purchasing frequency include auto services, carpet cleaning, optical stores, fine dining, healthcare, home services, professional services, specialty stores, sports and leisure and tires. In one or more embodiments, the research consumer purchasing frequency includes those retailers who sell good[s] and/or services that a consumer will likely choose to research in advance of their purchase. Non-limiting examples of retailers that may fall into the research consumer purchasing frequency include auto dealers and manufacturers, consumer electronics retailers, department stores, financial services, home furnishings, home improvement stores, home remodeling business, mattress and bedding stores, real estate, satellite, soft goods, telecommunications and travel. In one or more embodiments, the CPG consumer purchasing frequency includes those retailers that sell goods that are consumable and need frequent replacement, such as food, beverages, and cleaning products. Id. at 31:8—29 (emphasis added). The Specification uses the term “consumer purchasing frequency” to refer to a characteristic of the products and/or services sold by a particular customer. The Examiner does not direct us to any instance in which the Specification uses this term to refer to purchasing patterns of an individual 5 Appeal 2014-006433 Application 12/262,813 customer. Thus, on this record, and under the applicable broadest reasonable interpretation standard, we construe the claim term “consumer purchasing frequency for the number of products and/or services” as referring to the frequency with which the recited products and/or services are typically purchased by consumers. Data concerning the purchasing activities of an individual customer are not a “consumer purchasing frequency for the number of products and/or services,” as that term is used in claim 1. As discussed above, the Examiner cites disclosures in Tripp of a database that stores data regarding the product (or service) purchase and/or usage patterns of individual customers as corresponding to the “consumer purchasing frequency for the number of products and/or services” limitation of claim 1. See Ans. 5—7 (citing Tripp || 31—35); Final Act. 5—7, 20 (citing Tripp H 31—35). The Examiner’s finding that these portions of Tripp disclose, teach, or suggest the “consumer purchasing frequency” limitation of claim 1 is deficient because it is based on an incorrect claim construction. The Examiner’s rejection of claims 2—11 is deficient for the same reasons. NEW GROUND OF REJECTION Claims 1—11 are rejected under 35U.S.C. § 101 as being directed to judicially-excepted subject matter. Alice Corp. Party Ltd. v. CLS Bank International, 134 S. Ct. 2347 (2014) identifies a two-step framework for determining whether claimed subject matter is judicially-excepted from patent eligibility under § 101. 6 Appeal 2014-006433 Application 12/262,813 According to Alice step one, “[w]e must first determine whether the claims at issue are directed to a patent-ineligible concept,” such as an abstract idea. Alice, 134 S. Ct. at 2355. Taking claim 1 as representative of the claims on appeal, the claimed subject matter is directed to media planning. See also Spec. 1:12—15 (“1. Technical Field[:] One aspect of the present invention relates to a computer-implemented, automated media planning method and system.”) Media planning (e.g., for advertising; see Spec. 1:25—29) is a fundamental economic practice and thus a building block of human ingenuity. As such, it is an abstract idea. Step two is “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.’” Id. (alteration in original) (quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1294 (2012)). We see nothing in the subject matter claimed that transforms the abstract idea of media planning into an inventive concept. The system of claim 1 sets out four steps for a CPU to perform. The first two call for “receiving” first and second types of information; the third “receives]” options; and then, in the fourth, “scoring” the options based on said first and second information. None of these individual steps, viewed “both individually and ‘as an ordered combination,”’ transforms the nature of the claim into patent- eligible subject matter. See Alice, 134 S. Ct. at 2355 (quoting Mayo, 132 S. Ct. at 1297, 1298). 7 Appeal 2014-006433 Application 12/262,813 The receiving and scoring steps are known mental operations for gathering information and then ranking one’s options based on the information received. Claim 1 does recite a computer. But nothing more than basic computer functionalities are needed to perform said operations. Accordingly, the steps add little to patentably transform the media planning abstract idea. Cf. SmartGene, Inc. v. Advanced Biological Labs., SA, 555 F. App’x 950, 954—955 (Fed. Cir. 2014), cert, denied, 135 S. Ct. 58 (2014): Claim 1 does no more than call on a “computing device,” with basic functionality for comparing stored and input data and rules, to do what doctors do routinely. In three steps, claim 1 defines a “method for guiding the selection of a therapeutic treatment regimen for a patient with a known disease or medical condition.” 786 patent, col. 17, lines 49—51. The method (1) “provides] patient information to a computing device” having routine input, memory, look-up, comparison, and output capabilities and that (2) “generates] ... a ranked listing of available therapeutic treatment regimens” and (3) “generat[es] . . . advisory information for one or more therapeutic treatment regimens in said ranked listing.” Id. at col. 17, line 52, through col. 18, line 3. Whatever the boundaries of the “abstract ideas” category, the claim at issue here involves a mental process excluded from section 101: the mental steps of comparing new and stored information and using rules to identity medical options. We note that claim 1 more specifically calls for “a computer having a central processing unit (CPU) for executing machine instructions and a memory for storing machine instructions that are to be executed by the CPU.” But any general-purpose computer available at the time the application was filed would have satisfied these limitations. The Specification supports that view. See Spec. 8:20-9:30. “[T]he mere 8 Appeal 2014-006433 Application 12/262,813 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.” Alice, 134 S. Ct. at 2358. For the foregoing reasons, we find that claim 1 covers claimed subject matter that is judicially excepted from patent eligibility under § 101. The dependent claims describe various types of information that can be gathered and used for scoring the options which add little to patentably transform the abstract idea. Therefore, we enter a new ground of rejection of claims 1—11 under 35U.S.C. § 101. DECISION For the foregoing reasons, we reverse the Examiner’s decision rejecting claims 1—11. Claims 1—11 are newly rejected. NEW GROUND This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” 37 C.F.R. § 41.50(b) also provides that the Appellants, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: 9 Appeal 2014-006433 Application 12/262,813 (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the proceeding will be remanded to the examiner. . . . (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same record. . . . 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). REVERSED; 37 C.F.R, $ 41.50(b) 10 Copy with citationCopy as parenthetical citation