Ex Parte Wright et al

Patent Trial and Appeal Board

Oct 28, 2016

12752464 (P.T.A.B. Oct. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
121752,464 04/01/2010
124722 7590 11/01/2016
Tarolli, Sundheim, Covell & Tummino LLP
1300 East Ninth Street
Suite 1700
Cleveland, OH 44114
FIRST NAMED INVENTOR
JOSEPH P. WRIGHT
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.
HRS-022980 US PRI 2526
EXAMINER
OSMAN BILAL AHME, AF AF
ART UNIT PAPER NUMBER
3622
NOTIFICATION DATE DELIVERY MODE
11/01/2016 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):
rkline@tarolli.com
docketing@tarolli.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOSEPH P. WRIGHT and KARLE. WILLIAMS
Appeal2014-006440
Application 12/752,4641
Technology Center 3600
Before MURRIEL E. CRAWFORD, HUBERT C. LORIN, and
MATTHEWS. MEYERS, Administrative Patent Judges.
LORIN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Joseph P. Wright, et al. (Appellants) seek our review under 35 U.S.C.
§ 134 of the final rejection of claims 1, 3, 4 and 6-23. We have jurisdiction
under 35 U.S.C. § 6(b) (2002).
SUMMARY OF DECISION
We REVERSE and enter NEW GROUNDS OF REJECTION.
1 The Appellants identify Harris Corporation as the real party in interest.
App. Br. 3.
Appeal2014-006440
Application 12/752,464
THE INVENTION
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
Claim 1: A non-transitory computer readable medium having
computer executable instructions to perform a method for
implementing a campaign, the method comprising:
registering in a database each of a plurality of registered users
to receive notifications sent on behalf of a business customer;
creating a given campaign for the business customer by storing
campaign data that parameterizes at least timing and content for the
given campaign; and
in response to determining to begin distribution of the given
campaign based on the campaign data:
sending a unique campaign code associated with the
given campaign to a point-of-sale (POS) system to enable
tracking of financial activity motivated by the given campaign;
and
causing at least one notification to be sent to each of the
plurality registered users about the campaign, the notification
comprising an offer code that is based on at least a portion of
the unique campaign code associated with the given campaign,
wherein the unique campaign code associated with the given
campaign and the offer code are different codes, and wherein
the given campaign is identifiable from the offer code.
THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Treyz et al.
("Treyz")
Teague et al.
("Teague"
US 6,587,835 Bl
US 2006/0212355 Al
2
July 1, 2003
Sept. 21, 2006
Appeal2014-006440
Application 12/752,464
Moukas et al.
("Moukas")
US 2009/0271267 Al
The following rejections are before us for review:
Oct. 29, 2009
1. Claims 1, 3, 6-19 and 21 are rejected under 35 U.S.C. §103(a) as
being unpatentable over Teague.
2. Claim 20 is rejected under 35 U.S.C. §103(a) as being unpatentable
over Teague and Treyzer.
3. Claims 4, 22 and 23 are rejected under 35 U.S.C. §103(a) as being
unpatentable over Teague and Moukas.
ISSUES
Did the Examiner err in rejecting claims 1, 3, 6-19 and 21under35
U.S.C. §103(a) as being unpatentable over Teague?
Did the Examiner err in rejecting claim 20 under 35 U.S.C. §103(a) as
being unpatentable over Teague and Treyzer?
Did the Examiner err in rejecting claims 4, 22 and 23 are rejected
under 35 U.S.C. §103(a) as being unpatentable over Teague and Moukas?
ANALYSIS
The rejection of claims 1, 3, 6--19 and 21under35 U.S.C. §103(a) as being
unpatentable over Teague.
The rejection of claim 20 under 35 U.S. C. §103 (a) as being unpatentable
over Teague and Treyzer.
Independent claims 1 and 15 include a claim limitation to sending a
first tracking code (i.e., "campaign code") to a point-of-sale (POS) system to
enable tracking of certain information. The Examiner cited paras. 58 and 63
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Application 12/752,464
of Teague as evidence that said claim limitation is disclosed in the prior art.
Final Act. 9. Said disclosure describes sending a bar code embedded in a
customized coupon to a POS. According to Teague paragraph 44, in "an
alternate embodiment, [an] embedded tracking code is a bar code."
Accordingly, the Examiner's characterization that Teague discloses said
claim limitation to said first tracking code appears to be correct.
However, the claims also require a second identifying code (i.e.,
"offer code") be based on the first tracking code, where the first tracking and
second identifying codes are different codes. In that regard, the Examiner
cites the Abstract and paragraphs 41--45 and 93-94 of Teague as evidence
that said different codes as claimed are disclosed in the prior art. We have
reviewed said disclosures but do not see there disclosed the different
tracking and identifying codes as claimed. While identifying codes are
clearly disclosed (see Teague, Abstract and paragraph 94), there is no
disclosure of the identifying code is based on the tracking code and that it be
different.
Teague provides a generic disclosure of identifying and tracking
codes while the claimed subject matter specifically requires that a second
identifying code be based on a first tracking code and that the first tracking
and second identifying codes be different codes. Teague alone is
insufficient to show that, given identifying and tracking codes, one of
ordinary skill in the art would have reached the more specific subject matter
claimed.
We note the Examiner's characterization of the claim limitation to
different first tracking and second identifying codes as being nonfunctional
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Application 12/752,464
descriptive material. See Final Act. 10. However, that characterization is
belied by the fact that the codes do have corresponding functions; that is,
tracking and identifying. Claim 1, for example, specifically states that the
first tracking code "enable[s] tracking of financial activity motivated by the
given campaign." (Emphasis added). Why the different codes are
nonfunctional, notwithstanding their corresponding different functions, is
not adequately explained.
For the foregoing reasons, a prima facie case of obviousness for the
subject matter of the independent claims has not been made out in the first
instance by a preponderance of the evidence. We reach the same conclusion
as to the dependent claims 3, 6-14 and 16-20 that depend from claims 1
and 15 respectively. Accordingly, the rejections are not sustained.
The rejection of claims 4, 22 and 23 under 35 U.S.C. §103(a) as being
unpatentable over Teague and 111,,foukas.
The rejection of claim 4, which depends from claim 1, is not sustained
for the reasons above.
The rejection of claim 22, which is an independent claim, is also not
sustained for the reasons above. This is so because it includes the same
limitation at issue (i.e., different identifying and tracking codes) and the
Examiner's position that Teague discloses it is similar. See Final Act. 16.
Because claim 23 is rejected under§ 112(b ), the rejection of claim 23
under§ 103 is summarily reversed.
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Application 12/752,464
NEW GROUNDS OF REJECTION
(1) Claim 23 is rejected under 35 U.S.C. § 112, second paragraph, as
being indefinite for failing to particularly point out and distinctly claim the
subject matter which applicants regard as the invention.
Claim 23 depends from itself (claim 23). See Amendment filed Jan.
7, 2013.
(2) Claims 1, 3, 4 and 6-22 are rejected under 35 U.S.C. § 101 as
being directed to non-statutory subject matter.
Alice Corp. Pty. Ltd. v. CLS Banklnt'l, 134 S. Ct. 2347 (2014)
identifies a two-step framework for determining whether claimed subject
matter is judicially---excepted from patent eligibility under § 101. 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. Id. at 2355.
Taking claim 1 as representative of the claims on appeal, the claimed
subject matter is directed to the concept of information tracking and
identification. The tracking and identifying of information are fundamental
building blocks of knowledge and as such are abstract ideas.
But also, as claimed, the tracking and identifying of information are
conducted in a business method environment. According to the
Specification, the invention "relates generally to a system and method for
managing a marketing campaign." Spec. i-f 1. In that context, information
tracking and identification are fundamental economic and conventional
business practices. The Supreme Court has held certain fundamental
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Application 12/752,464
economic and conventional business practices, like "intermediated
settlement," as being abstract ideas. See Alice, 134 S. Ct. at 2356-57. The
information tracking and identification concept to which claim 1 is directed
to is similar to the "intermediated settlement" concept at issue in Alice.
Thus, consistent therewith, the information tracking and identification
concept to which claim 1 is directed to is an abstract idea.
We note that claim 1 does describe an information tracking and
identification concept in more particular terms; most notably through
tracking and identifying codes that are based on but are different from each
other. But this does not disturb the fact that the information tracking and
identification concept to which claim 1 is directed to is an abstract idea. See
Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed.Cir.2014)
("Although certain additional limitations, such as consulting an activity log,
add a degree of particularity, the concept embodied by the majority of the
limitations describes only the abstract idea of showing an advertisement
before delivering free content.").
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. at 715-714.
We see nothing in the subject matter claimed that transforms the
abstract idea of information tracking and identification into an inventive
concept.
The use of tracking and identifying codes as a means of implementing
an information tracking and identification scheme is known and thus adds
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little of significance. Cf Essociate, Inc. v. Clickbooth.com, LLC, No. SACV
13-01886-JVS, 2015 WL 1428919 (C.D. Cal. Feb. 11, 2015), ajfd, 641 F.
App'x 1006 (Fed. Cir. 2016), cert. denied, (U.S. Oct. 3, 2016).
The particular scheme claimed does not significantly affect the
abstract idea. Albeit a particular application is claimed whereby tracking
and identifying codes that are based on but are different from each other
describe are used, the scheme does not significantly alter the abstract idea of
information tracking and identification in any material way. Cf
CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1371 (Fed. Cir.
2011) ("The Court [Parker v. Flook, 437 U.S. 584 (1978)] rejected the
notion that the recitation of a practical application for the calculation could
alone make the invention patentable.").
Finally, we note that claim 1 calls for "[a] non-transitory computer
readable medium having computer executable instructions to perform a
method for implementing a campaign." The method recited calls for
registering users in a database and sending information to a POS system.
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. i-f 25. "[T]he mere recitation of a generic computer cannot
transform a patent-ineligible abstract idea into a patent-eligible invention.
Alice at 2358. Stating an abstract idea "while adding the words 'apply it' is
not enough for patent eligibility." Id. A general purpose computer is used
to employ "well-understood, routine, conventional activities previously
known to the industry." Alice, 134 S. Ct. at 2359.
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For the foregoing reasons, we find that claim 1 covers claimed subject
matter that is judicially---excepted from patent eligibility under § 101. The
other independent claims - system claims 15 and 22 parallel claim 1 -
similarly covering claimed subject matter that is judicially-excepted from
patent eligibility under § 101. The dependent claims describe various
versions of a particular information tracking and identification scheme that
do little to patentably transform the information tracking and identification
abstract idea.
Therefore, we enter a new ground of rejection of claims 1, 3, 4 and 6-
22 under 35 U.S.C. § 101.
For the foregoing reasons, the rejections are reversed but claim 23 is
newly rejected under §112(b) and claims 1, 3, 4 and 6-22 are newly rejected
under§ 101.
CONCLUSIONS
The rejection of claims 1, 3, 6-19 and 21under35 U.S.C. §103(a) as
being unpatentable over Teague is reversed.
The rejection of claim 20 under 35 U.S.C. § 103(a) as being
unpatentable over Teague and Treyzer is reversed.
The rejection of claims 4, 22 and 23 under 35 U.S.C. §103(a) as being
unpatentable over Teague and Moukas is reversed.
Claim 23 is rejected under 35 U.S.C. § 112, second paragraph, as
being indefinite for failing to particularly point out and distinctly claim the
subject matter which applicants regard as the invention.
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Application 12/752,464
Claims 1, 3, 4 and 6-22 are rejected under 35 U.S.C. § 101 as being
directed to non-statutory subject matter.
DECISION
The decision of the Examiner to reject claims 1, 3, 4 and 6-23 is
reversed.
Claims 1, 3, 4 and 6-23 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 Appellant(s), 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:
( 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 ....
REVERSED; 37 C.F.R. § 41.50(b)
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