Ex Parte Sherr et al

Patent Trial and Appeal Board

Mar 16, 2017

12262813 (P.T.A.B. Mar. 16, 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.
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).
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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
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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
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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
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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.
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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).
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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
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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:
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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)
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