Ex Parte Stibel et al

Patent Trial and Appeal Board

May 16, 2017

14614727 (P.T.A.B. May. 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.
14/614,727 02/05/2015 Jeffrey M. Stibel DBSP0057 5820
88635 7590
Los Angeles Patent Group
8200 Wilshire Boulevard
Suite 200
Beverly Hills, CA 90211
05/18/2017 EXAMINER
PAN, PEILIANG
ART UNIT PAPER NUMBER
2492
NOTIFICATION DATE DELIVERY MODE
05/18/2017 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):
mail@lapatentgroup.com
arman@lapatentgroup.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JEFFREY M. STIBEL,
CHAD MICHAEL BUECHLER, RAYMOND LANDGRAF,
PETER DELGROSSO, and AARON B. STIBEL
Appeal 2016-008693
Application 14/614,727
Technology Center 2400
Before CARLA M. KRIVAK, HUNG H. BUI, and
JEFFREY A. STEPHENS, Administrative Patent Judges.
STEPHENS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants1 seek our review under 35 U.S.C. § 134(a) from the
Examiner’s Final Rejection of claims 1, 3, 6—9, 11—13, 18, 20, 22, and 23,
which are all the claims pending in the application. We have jurisdiction
under 35 U.S.C. § 6(b).
We affirm.
1 The real party in interest is identified as Dun & Bradstreet Emerging
Businesses Corp. App. Br. 1.
Appeal 2016-008693
Application 14/614,727
Claimed Subject Matter
The claimed invention relates to a system and method for
authenticating entities with registered accounts across different online
service providers and third party platforms. Spec. Title, Abstract.
Claim 1 is the only independent claim. Claim 1 is reproduced below
to illustrate the subject matter on appeal.
1. A method comprising:
maintaining a profile for each of a plurality of entities at
an authentication system, each profile storing any of personal and
business identifying information about a different entity, the
authentication system comprising a microprocessor and a
memory that stores each profile for each entity of the plurality of
entities, wherein the microprocessor
receives from an online merchant over a digital
network, at least one eligibility requirement restricting entity
eligibility to a promotion offered by the online merchant;
identifies a subset of entities from the plurality of
entities with profiles storing personal and business identifying
information satisfying said at least one eligibility requirement,
wherein the subset of entities have no prior engagement with the
online merchant;
performs a targeted marketing campaign
comprising passing over the digital network, a code to the subset
of entities and tracking an identifier for each entity of the subset
of entities receiving said code, said code for redeeming the
promotion from the online merchant;
obtains over the digital network from the online
merchant, shipping information or payment information a
particular entity attempting to use the code in completing a
transaction enters to an ecommerce site of the online merchant;
verifies eligibility of the particular entity in
redeeming the promotion by use of said code as a result of said
identifier being present in the shipping information or payment
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information entered by the customer to the ecommerce site of the
online merchant; and
modifies said ecommerce site of the online
merchant with discounted pricing for the transaction with the
particular entity as a result of said verifying eligibility of the
particular entity.
Examiner’s Rejections and References
(1) Claims 1, 3, 6—9, 11—13, 18, 20, 22, and 23 stand rejected under
35 U.S.C. § 101 as directed to non-statutory subject matter. Final Act. 2—3.
(2) Claims 1, 6—9, 11, 13, 18, 22, and 23 stand rejected under
35 U.S.C. § 103(a) as obvious over Stratton et al. (US 2012/0109752 Al;
publ. May 3, 2012) (“Stratton”) and Greenspan (US 2012/0089461 Al; publ.
Apr. 12, 2012). Final Act. 3—7.
(3) Claim 3 stands rejected under 35 U.S.C. § 103(a) as obvious
over Stratton, Greenspan, and Labrador et al. (US 2012/0072975 Al; publ.
Mar. 22, 2012) (“Labrador”). Final Act. 7—8.
(4) Claims 12 and 20 stand rejected under 35 U.S.C. § 103(a) as
obvious over Stratton, Greenspan, and Owen (US 2014/0149202 Al; publ.
May 29, 2014). Final Act. 8—10.
ANALYSIS
Rejection under 35 U.S.C. § 101
Appellants argue claims 1, 3, 6—9, 11—13, 18, 20, 22, and 23 as a
group. We select independent claim 1 as representative. The remaining
claims stand or fall with claim 1. 37 C.F.R. § 41.37(c)(l)(iv).
Claim 1 recites a method comprising seven steps. The first step
(maintaining a profile) is performed “at an authentication system” that
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comprises a microprocessor and a memory. The microprocessor performs
the remaining six steps. The seven steps result in discounted pricing for the
entity’s (e.g., customer’s) transaction.
Appellants argue the Examiner erred in rejecting the claims under
35 U.S.C. § 101 because “claim 1 is not directed to any abstract idea.” App.
Br. 7. In this regard, Appellants dispute the Examiner’s characterization of
the claim as being directed to the abstract idea “covering the fundamental
economic practice of using coupons to provide discounts, and therefore . . .
methods of organizing human activities and data.” Ans. 4; see also Final
Act. 3. In particular, Appellants assert claim 1 is not directed to an abstract
idea because “[cjlaim 1 necessarily incorporates online communications,
online messaging, and online merchant system integration, all of which
necessarily exclud[e] human performance of the methodology,” as “the
[claimed] steps cannot be performed in the human mind or by a human.”
App. Br. 5—6; see also Reply Br. 2, 4. In addition, Appellants argue claim 1
does not simply add conventional computer components to well-known
business practices. App. Br. 12. We are not persuaded by Appellants’
arguments.
In support of the § 101 rejection of claim 1, the Examiner finds the
claim recites “steps [that] could be performed entirely by a person and are
abstract steps . . . because they are directed to general methods of organizing
human activities and data.” Final Act. 2—3. The Examiner reasons that the
claimed steps—i.e., maintaining a profile, receiving eligibility requirements,
identifying a subset of entities from their profiles, passing a promotion code
to an eligible entity, obtaining shipping or payment information, and
verifying eligibility of the entity in redeeming the promotion code—“could
be performed entirely by a person,” such as “a merchant [that] distributes
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paper coupons to some of his customers based on certain criteria” and
verifies eligibility for coupon use when “the customer bring[s] the paper
coupon to the merchant’s store to buy the goods associated with the paper
coupon.” Ans. 4. The Examiner recognizes the claims recite computer
technology to perform the steps, but finds the claimed technology is “no
more than a generic computer to perform generic computer functions that are
well-understood, routine, and conventional activities, namely receiving,
compiling, and searching data.” Ans. 4; see also Final Act. 3. We find no
reversible error with the Examiner’s findings and agree with the Examiner
that claim 1 is directed to an abstract idea.
Title 35 U.S.C. § 101 provides that a new and useful “process,
machine, manufacture, or composition of matter” is eligible for patent
protection. The Supreme Court has made clear that the test for patent
eligibility under Section 101 is not amenable to bright-line categorical rules.
See Bilski v. Kappos, 561 U.S. 593, 609 (2010). There are, however, three
judicially-created exceptions to the broad categories of patent-eligible
subject matter in § 101: laws of nature, natural phenomena, and abstract
ideas. See Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S.
66, 70 (2012).
In Alice Corporation Pty. Ltd. v. CLS Bank International, 134 S. Ct.
2347 (2014), the Supreme Court applies Mayo’s “framework for
distinguishing patents that claim laws of nature, natural phenomena, and
abstract ideas from those that claim patent-eligible applications of these
concepts.” Alice, 134 S. Ct. at 2355. The first step is to “determine whether
the claims at issue are directed to one of those patent-ineligible concepts,”
such as an abstract idea. Id. If the claims are directed to a patent-ineligible
concept, the second step in the analysis is to “consider the elements of each
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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.” Id. (quoting Mayo, 566 U.S. at 79, 78). 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. (quotingMayo, 566 U.S. at 72—73)
(alteration in original).
Examining the claims as a whole, and using claim 1 as representative,
we agree with the Examiner’s finding that the claimed method of verifying
an entity’s eligibility in redeeming a promotion by using a promotional code
and providing discounted pricing for the qualifying entity’s transaction is a
method of organizing human activity and data and is, therefore, an abstract
idea. Under Alice, abstract ideas embrace “fundamental economic
practice^] long prevalent in our system of commerce,” (quoting Bilski, 561
U.S. at 611), including “longstanding commercial practice^]” and
“method[s] of organizing human activity.” Alice, 134 S. Ct. at 2356. Here,
the steps of claim 1 are directed to “organizing human activities and data,”
that is, the activities associated with managing customer coupons and
discounted pricing by a merchant. Ans. 4.
Appellants assert this characterization of claim 1 oversimplifies and
downplays the invention’s benefits by arbitrarily editing and abridging the
claim while ignoring the claimed technology that “extends online merchant
functionality by providing an authentication service that ties directly in with
the online merchant checkout process.” App. Br. 5; see also Reply Br. 2—3.
Appellants support their assertion by emphasizing the “authentication
system,” “microprocessor,” “memory,” “ecommerce site of the online
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merchant,” and “digital network” limitations recited in claim 1. Reply Br.
2—3. However, methods of organizing human activity, like mental
processes, remain unpatentable even when automated to reduce the burden
on the user of what once could have been done with pen and paper. Alice,
134 S. Ct. at 2359 (“[T]he claims at issue amount to ‘nothing significantly
more’ than an instruction to apply the abstract idea of intermediated
settlement using some unspecified, generic computer.” (quoting Mayo, 566
U.S. at 79)); see also CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d
1366, 1375 (Fed. Cir. 2011) (“That purely mental processes can be
unpatentable, even when performed by a computer, was precisely the
holding of the Supreme Court in Gottschalk v. Benson”).
Furthermore, data analysis and algorithms are abstract ideas. See,
e.g., Alice, 134 S. Ct. at 2355; Parker v. Flook, 437 U.S. 584, 589, 594—95
(1978) (“Reasoning that an algorithm, or mathematical formula, is like a law
of nature, Benson applied the established rule that a law of nature cannot be
the subject of a patent.”); Gottschalk v. Benson, 409 U.S. 63, 71—72 (1972).
That is, “[wjithout additional limitations, a process that employs
mathematical algorithms to manipulate existing information to generate
additional information is not patent eligible.” Digitech Image Techs., LLC v.
Elecs. for Imaging, Inc., 758 F.3d 1344, 1350-51 (Fed. Cir. 2014) (“Data in
its ethereal, non-physical form is simply information that does not fall under
any of the categories of eligible subject matter under section 101.”).
Appellants also argue “claim 1, like the claims of DDR, provides a
solution that is necessarily rooted in computer technology and resolves an
Internet-centric challenge through unconventional steps” in the context of
ecommerce. App. Br. 11 (citing DDR Holdings, LLC, v. Hotels.com, L.P.,
773 F.3d 1245 (Fed. Cir. 2014)); see also App. Br. 7; Reply Br. 5—6. We
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remain unpersuaded, as Appellants have not demonstrated their claimed
generic computer components are able in combination to perform functions
that are not merely generic, as the claims in DDR. See DDR Holdings, 773
F.3d at 1256-57 (holding the claims at issue patent eligible because “they do
not broadly and generically claim ‘use of the Internet’ to perform an abstract
business practice (with insignificant added activity),” and “specify how
interactions with the Internet are manipulated to yield a desired result—a
result that overrides the routine and conventional sequence of events
ordinarily triggered by the click of a hyperlink”).
Appellants further argue claim 1, like the claims in Enfish, LLC v.
Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016), recites an improvement in
computer-related technology including “[ejcommerce, electronic commerce,
or commerce conducted over the Internet.” App. Br. 11; see also App. Br. 5;
Reply Br. 6—7. Claim 1 does not, however, recite a specific improvement to
the way computers operate. See Enfish, 822 F.3d at 1336. Appellants also
have not demonstrated their claims “improve the way a computer stores and
retrieves data in memory,” as the claims in Enfish. See Enfish, 822 F.3d at
1336, 1339.
Under step two of the Alice framework, we agree with and adopt the
Examiner’s findings on pages 4—5 of the Answer. We determine that the
additional limitations, taken individually and as a whole in the ordered
combination, do not add significantly more to the abstract idea or transform
the abstract idea into patentable subject matter. Particularly, claim 1 recites
well-understood, routine, and conventional elements (i.e., a microprocessor,
memory, digital network, and ecommerce site), which “perform generic
computer functions that are well-understood, routine, and conventional
activities, namely receiving, compiling, and searching data.” Ans. 4—5.
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“[T]he use of generic computer elements like a microprocessor or user
interface do not alone transform an otherwise abstract idea into patent-
eligible subject matter.” FairWarningIP, LLC v. Iatric Sys., Inc., 839 F.3d
1089, 1096 (Fed. Cir. 2016) (citing DDR Holdings, 773 F.3d at 1256).
Appellants’ rebuttal of the Examiner’s findings merely restate claim
language emphasizing the microprocessor, memory, digital network,
authentication system, and ecommerce site of the online merchant. Reply
Br. 2-4. As discussed supra, however, we are not persuaded the added
computer elements such as the microprocessor, memory, digital network,
authentication system, and ecommerce site can transform the abstract idea
into a patent eligible invention.
Thus, we agree with the Examiner that independent claim 1 and the
claims which depend therefrom, are not directed to patent-eligible subject
matter. We, therefore, sustain the rejection under 35 U.S.C. § 101 of claims
1,3, 6-9, 11-13, 18, 20, 22, and 23.
Rejections of Claims 1, 3, 6—9, 11—13, 18, 20, 22, and 23
under 35 U.S.C. § 103(a)
Claim 1 recites “tracking an identifier for each entity of the subset of
entities receiving said code, said code for redeeming the promotion from the
online merchant” and “verif[ying] eligibility of the particular entity in
redeeming the promotion by use of said code as a result of said identifier
being present in the shipping information or payment information entered by
the customer to the ecommerce site of the online merchant.”
The Examiner finds Strutton’s marketing campaign provides
consumer coupons and promotions, thereby teaching a targeted marketing
campaign providing a code to entities for redeeming a promotion from an
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online merchant, as claimed. Final Act. 4 (citing Strutton 142, Fig. 4). The
Examiner acknowledges Strutton does not disclose tracking an identifier and
using the identifier to verily eligibility to use a promotional code, but relies
on Greenspan for the missing limitations. Final Act. 5.
In finding Greenspan’s advertising system verifies eligibility to use a
promotional code using a tracked identifier, the Examiner emphasizes
Greenspan’s teachings that the merchant terminal receives identity
information from the purchaser, such as a user ID token, and verifies that the
identity of the purchaser matches certain identity confirmation information,
prior to completing a purchase using a promotional code. Final Act. 5—6
(citing Greenspan 141); Ans. 8—9 (citing Greenspan 139).
Appellants argue although Greenspan performs a targeted marketing
campaign using a promotional offer/code, Greenspan “nowhere discloses or
suggests tracking any identifier for the entities receiving the code or
promotional offer” to “verify[] whether a purchaser [entity] satisfies an
eligibility requirement set by the merchant for redeeming [the] promotion
offered by the merchant,” as claim 1 requires. App. Br. 16—17.
We agree with Appellants. The portion of Greenspan relied upon by
the Examiner verifies a purchaser’s identity before payment approval in a
purchase transaction (see Greenspan 141), but does not verify eligibility of
the purchaser to use the promotional offer/code based on a tracked identifier
being present in purchaser-provided information, as claim 1 requires. App.
Br. 16—17; Reply Br. 8. In the cited portions of Greenspan, the purchaser’s
geographic proximity to the merchant confers eligibility to receive and use
the merchant’s promotional offers. See Greenspan 141; Reply Br. 10; App.
Br. 14.
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The Examiner also has not shown that the additional teachings of
Labrador and Owen make up for the above-noted deficiencies of Greenspan
and Strutton. As the Examiner has not identified sufficient evidence to
support the Examiner’s finding that the references teach or suggest the
claimed “tracking an identifier for each entity of the subset of entities
receiving said code” and “verif[ying] eligibility of the particular entity in
redeeming the promotion by use of said code as a result of said identifier
being present in the shipping information or payment information entered by
the customer to the ecommerce site of the online merchant,” we do not
sustain the Examiner’s obviousness rejections of independent claim 1 and
claims 3, 6—9, 11—13, 18, 20, 22, and 23 dependent therefrom. Because the
above-discussed issue is dispositive as to the obviousness rejections of all
claims on appeal, we do not reach additional issues raised by Appellants’
arguments.
DECISION
We affirm the Examiner’s decision rejecting claims 1, 3, 6—9, 11—13,
18, 20, 22, and 23 under 35 U.S.C. § 101.
We reverse the Examiner’s decision rejecting claims 1, 3, 6—9, 11—13,
18, 20, 22, and 23 under 35 U.S.C. § 103(a).
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).
AFFIRMED
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