Ex Parte Ziegler et al

Patent Trials and Appeals Board

Jun 6, 2019

12870420 - (D) (P.T.A.B. Jun. 6, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/870,420 08/27/2010
54640 7590 06/10/2019
PERRY+ CURRIER INC.
1300 YONGE STREET
SUITE 500
TORONTO, ON M4T-1X3
CANADA
FIRST NAMED INVENTOR
Gary Kenneth Ziegler
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.
P3472USOO 9771
EXAMINER
REFAI, RAMSEY
ART UNIT PAPER NUMBER
3668
NOTIFICATION DATE DELIVERY MODE
06/10/2019 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):
docketing@pckip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GARY KENNETH ZIEGLER and ANDREW FINALL
Appeal2018-003188
Application 12/870,420 1
Technology Center 3600
Before JOSEPH L. DIXON, CATHERINE SHIANG, and
STEVEN M. AMUNDSON, Administrative Patent Judges.
SHIANG, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 1-7, 9-19, 21, and 22, which are all the claims pending
and rejected in the application. We have jurisdiction under 35 U.S.C. § 6(b ).
We reverse.
1 Appellants identify Ethor Media Ltd. as the real party in interest. App.
Br. 3.
Appeal 2018-003188
Application 12/870,420
STATEMENT OF THE CASE
Introduction
The present invention relates to "to integrating diverse point of sale
systems by providing a common data model." Spec. ,r 1. Claim 1 is
exemplary:
1. A system for integrating a plurality of diverse point of
sale systems, the system comprising:
a first computer processor in communication with the
plurality of diverse point of sale systems, wherein each diverse
point of sale system of the plurality diverse point of sale
systems generates non-compatible point of sale data, the first
computer processor configured to communicate with each of
the plurality of diverse point of sale systems using a point of
sale agent;
a second computer processor linked to the first computer
processor, the second computer processor configured to operate
an order manager; and
a memory storage unit for storing a point of sale
database, wherein the point of sale database provides a common
data model configured to be recognized by the order manager,
the common data model including fields corresponding to at
least one of a point of sale system identifier, pricing, and
promotions,
wherein the point of sale agent receives the non-
compatible point of sale data from each of the plurality of
diverse point of sale systems and the order manager, the point
of sale agent further configured to map the point of sale data to
the common data model.
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References and Re} ections2
Claims 1-7, 9-19, 21, and 22 are rejected under 35 U.S.C.
§ 101 because they are directed to patent-ineligible subject matter. Final
Act. 11-12.
Claims 1-7, 9-19, 21, and 22 are rejected under pre-AIA 35 U.S.C.
§ 112, first paragraph, as failing to comply with the written-description
requirement. Final Act. 12-14.
Claims 1-3, 9-12, 17-19, 21, and 22 are rejected under pre-AIA 35
U.S.C. § 102 as being anticipated by Duvall (US 2003/0083944 Al,
published May 1, 2003). Final Act. 14--16.
Claims 4--7 and 13-16 stand rejected under pre-AIA 35 U.S.C.
§ I03(a) as being unpatentable over the collective teachings of Duvall and
Kramer (US 2004/0162778 Al, published Aug. 19, 2004). Final Act. 16-
17.
ANALYSIS
35 U.S.C. § 101
We have reviewed the Examiner's rejection in light of Appellants'
contentions and the evidence of record. We concur with Appellants'
contention that the Examiner erred in this case.
Section 101 of the Patent Act provides "[ w ]hoever invents or
discovers any new and useful process, machine, manufacture, or
composition of matter, or any new and useful improvement thereof, may
2 Throughout this opinion, we refer to the ( 1) Final Office Action dated Dec.
23, 2015 ("Final Act."); (2) Appeal Brief dated Jan. 23, 2017 ("App. Br.");
and (3) Examiner's Answer dated April 12, 2017 ("Ans.").
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Application 12/870,420
obtain a patent therefor, subject to the conditions and requirements of this
title." 35 U.S.C. § 101. However, the Supreme Court has long interpreted
35 U.S.C. § 101 to include implicit exceptions: "[l]aws of nature, natural
phenomena, and abstract ideas" are not patentable. E.g., Alice Corp. Pty.
Ltd. v. CLS Bankint'l, 573 U.S. 208,216 (2014) (internal quotation marks
and citation omitted).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court's two-step framework, described in Mayo
and Alice. Id. at 217-18 ( citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75-77 (2012)). In accordance with that framework,
we first determine what concept the claim is "directed to." See Alice, 573
U.S. at 219 ("On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk."); see also Bilski v. Kappas, 561 U.S. 593, 611 (2010) ("Claims 1 and 4
in petitioners' application explain the basic concept of hedging, or protecting
against risk.").
Concepts determined to be abstract ideas, and, thus, patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219-20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594--95 (1978)); and
mental processes (Gottschalkv. Benson, 409 U.S. 63, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as "molding rubber products" (Diamond v. Diehr, 450 U.S. 175, 191
(1981) ); "tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores" (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
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252, 267---68 (1854))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that "[a] claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula." Diehr, 450 U.S. at 187; see also id. at 191 ("We
view respondents' claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula."). Having
said that, the Supreme Court also indicated that a claim "seeking patent
protection for that formula in the abstract ... is not accorded the protection
of our patent laws, ... and this principle cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment." Id. ( citing Benson and Flook); see, e.g., id. at 187 ("It is now
commonplace that an application of a law of nature or mathematical formula
to a known structure or process may well be deserving of patent
protection.").
If the claim is "directed to" an abstract idea, we tum to the second
step of the Alice and Mayo framework, where "we must examine the
elements of the claim to determine whether it contains an 'inventive
concept' sufficient to 'transform' the claimed abstract idea into a
patent-eligible application." Alice, 573 U.S. at 221 ( citation omitted). "A
claim that recites an abstract idea must include 'additional features' to
ensure 'that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea]."' Id. ( quoting Mayo, 566 U.S. at 77).
"[M]erely requir[ing] generic computer implementation[] fail[ s] to transform
that abstract idea into a patent-eligible invention." Id.
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The PTO recently published revised guidance on the application of
§ 101. USPTO, 2019 REVISED PATENT SUBJECT MATTER ELIGIBILITY
GUIDANCE, 84 Fed. Reg. 50 (Jan. 7, 2019) ("Guidance"). Under the
Guidance, we first look to whether the claim recites:
(1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, certain methods of
organizing human activity such as a fundamental economic
practice, or mental processes) (Step 2A, Prong 1 ); and
(2) additional elements that integrate the judicial exception into
a practical application (see MANUAL OF p ATENT EXAMINING
PROCEDURE ("MPEP") §§ 2106.05(a}-(c), (e}-(h)) (9th ed.,
Rev. 08.2017, 2018) (Step 2A, Prong 2).
Only if a claim (1) recites a judicial exception and (2) does not integrate that
exception into a practical application, do we then look to whether the claim:
(3) adds a specific limitation beyond the judicial exception that
is not "well-understood, routine, conventional" in the field (see
MPEP § 2106.05(d)); or
(4) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high
level of generality, to the judicial exception. (Step 2B.)
See Guidance, 84 Fed. Reg. at 54--56.
Even if each of independent claims 1 and 10 recites an abstract idea
(such as sales activities), the Federal Circuit explains the "directed to"
inquiry is not simply asking whether the claims involve a patent-ineligible
concept:
The "directed to" inquiry ... cannot simply ask whether the
claims involve a patent-ineligible concept, because essentially
every routinely patent-eligible claim involving physical
products and actions involves a law of nature and/or natural
phenomenon-after all, they take place in the physical world.
See Mayo, 132 S. Ct. at 1293 ("For all inventions at some level
embody, use, reflect, rest upon, or apply laws of nature, natural
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phenomena, or abstract ideas.") Rather, the "directed to"
inquiry applies a stage-one filter to claims, considered in light
of the specification, based on whether "their character as a
whole is directed to excluded subject matter."
Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016); see
also Diehr, 450 U.S. at 188 ("In determining the eligibility of respondents'
claimed process for patent protection under § 101, their claims must be
considered as a whole."); McRO, Inc. v. Bandai Namco Games Am. Inc., 837
F.3d 1299, 1314 (Fed. Cir. 2016) (the question is whether the claims as a
whole "focus on a specific means or method that improves the relevant
technology or are instead directed to a result or effect that itself is the
abstract idea and merely invoke generic processes and machinery").
Therefore, we proceed to Step 2A, Prong 2 of the Guidance to
determine whether additional elements of the claims integrate the sales
activities into a practical application. Such additional elements may reflect
an improvement to a technology or technical field. See Guidance, 84 Fed.
Reg. at 55. We determine that additional elements of independent claim 1
integrate the abstract idea into a practical application, as the additional
elements ("integrating a plurality of diverse ... systems," "a first computer
processor in communication with the plurality of diverse ... systems,
wherein each diverse ... system of the plurality diverse ... systems
generates non-compatible ... data, the first computer processor configured
to communicate with each of the plurality of diverse ... systems using a[ n]
... agent," "a second computer processor linked to the first computer
processor, the second computer processor configured to operate a[] ...
manager," and "a memory storage unit for storing a ... database, wherein
the ... database provides a common data model configured to be recognized
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by the ... manager, the common data model including fields corresponding
to at least one of a ... system identifier, ... wherein the ... agent receives
the non-compatible ... data from each of the plurality of diverse ... systems
and the ... manager, the ... agent further configured to map the ... data to
the common data model") reflect a technology improvement of integrating
diverse systems, so that non-compatible data from diverse systems are
mapped to a common data model for centralized access. See claim 1; see
also DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed.
Cir. 2014) (holding the claims satisfy Alice step two because "the claimed
solution is necessarily rooted in computer technology in order to overcome a
problem specifically arising in the realm of computer networks").
Similarly, we determine that additional elements of independent
claim 10 integrate the abstract idea into a practical application, as the
additional elements ("integrating a plurality of diverse ... systems,"
"mapping non-compatible ... data communicated by each diverse ...
system of the plurality of diverse ... systems to a common data model
configured to be recognized by a[] ... manager, the common data model
including fields corresponding to at least one of a ... system identifier ... , "
and "communicating, using one or more ... agents, the ... data between
each diverse ... system of the plurality diverse ... systems and the ...
manager in accordance with the common data model") reflect a technology
improvement of integrating diverse systems, so that non-compatible data
from diverse systems are mapped to a common data model for centralized
access. See claim 1 O; see also DDR Holdings, 773 F.3d at 1257.
Our determinations are supported by the Specification, which
describes the prior-art problem of providing centralized access to non-
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compatible data from diverse systems, and the need to integrate the diverse
systems by mapping non-compatible data to a common data model, in order
to allow centralized access to such data:
The present invention relates more specifically to integrating
diverse point of sale systems by providing a common data
model.
Spec. 1 :4---6.
Significant technological challenges have impacted the retail
industry as a result of a fractured point of sale system
infrastructure. Franchises, and even franchisees within a
franchise, commonly use diverse point of sale systems. The
challenge occurs when a franchise as a whole tries to do
something as a single unit, such as online ordering. A particular
franchise might, for example, have five diverse point of sale
systems being used throughout their chain. In order to provide a
unified online ordering system that works with all of their
stores, they must implement five different custom integrations
with five diverse POS systems, none of which "talk" to each
other or are integrated with each other in any way. As a result,
retailers desiring to offer online retailing cannot leverage point
of sale data that is already available to them.
Several solutions for providing an integrated point of sale
system have been proposed, however none of them provide
integration of diverse point of sale systems.
Spec. 1:8-18.
None of [the prior-art patent applications] provide any means to
integrate diverse point of sale systems for centralizing access to
point of sale data. Furthermore none of these patent
applications provide any means to leverage point of sale data
from the point of sale systems for online promotion.
Therefore, what is required is a means by which to integrate
diverse point of sale systems. What is also required is a means
to leverage point of sale data from the point of sale systems for
online promotion.
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Spec. 2:23-30.
The present invention provides a system, method and computer
program for integrating diverse point of sale systems. The
present invention is operable to communicate with diverse point
of sale systems to integrate point of sale data.
Spec. 4:18-22.
Because the additional elements of claims 1 and 10 integrate the
sales activities into a practical application, we determine each of claims 1
and 10 is not directed to an abstract idea. See Guidance, Step 2A, Prong 2.
For similar reasons, each of claims 2-7, 9, 11-19, 21, and 22 integrates
the sales activities into a practical application, and is not directed to an
abstract idea.
Therefore, we reverse the rejection of claims 1-7, 9-19, 21, and 22
under 35 U.S.C. § 101.
Pre-AJA 35 U.S.C. § 112, First Paragraph
The Examiner asserts claims 1-7, 9-19, 21, and 22 fail to comply
with the written-description requirement (Final Act. 12-13; Ans. 5-7) with
respect to the following claim limitations:
a first computer processor in communication with the
plurality of diverse point of sale systems, wherein each diverse
point of sale system of the plurality diverse point of sale
systems generates non-compatible point of sale data, the first
computer processor configured to communicate with each of
the plurality of diverse point of sale systems using a point of
sale agent;
a second computer processor linked to the first computer
processor, the second computer processor configured to operate
an order manager; and
. . . wherein the point of sale database provides a
common data model configured to be recognized by the order
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manager, the common data model including fields
corresponding to at least one of a point of sale system identifier,
pricing, and promotions,
wherein the point of sale agent receives the non-
compatible point of sale data from each of the plurality of
diverse point of sale systems and the order manager, the point
of sale agent further configured to map the point of sale data to
the common data model,
as recited in claim 1;
third computer processor configured to operate a campaign
manager, the third computer processor linked to the second
computer processor,
as recited in claim 4;
compare the non-compatible point of sale data from each
diverse point of sale system of the plurality of diverse point of
sale systems with the point of sale database,
as recited in claim 9;
wherein the first processor is configured to operate the point of
sale agent,
as recited in claim 21; and
wherein at least one diverse point of sale system of the plurality
of diverse point of sale systems is configured to operate the
point of sale agent,
as recited in claim 22.
We disagree. To satisfy the written-description requirement, the
disclosure must reasonably convey to skilled artisans that Appellants
possessed the claimed invention as of the filing date. See Ari ad Pharms.,
Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en bane).
Specifically, the description must "clearly allow persons of ordinary skill in
the art to recognize that [the inventor] invented what is claimed" and
the test requires an objective inquiry into the four comers of the
specification from the perspective of a person of ordinary skill
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in the art. Based on that inquiry, the specification must
describe an invention understandable to that skilled artisan and
show that the inventor actually invented the invention claimed.
. . . . [T]he level of detail required to satisfy the written
description requirement varies depending on the nature and
scope of the claims and on the complexity and predictability of
the relevant technology. For generic claims, we have set forth a
number of factors for evaluating the adequacy of the disclosure,
including "the existing knowledge in the particular field, the
extent and content of the prior art, the maturity of the science or
technology, [and] the predictability of the aspect at issue."
Id. (internal quotations and citations omitted).
[T]he description requirement does not demand any particular
form of disclosure, or that the specification recite the claimed
invention in haec verba ....
Id. at 1352 (citations omitted).
Here, we agree with Appellants that the Specification reasonably
conveys to skilled artisans that as of the filing date, Appellants possessed the
claimed invention with respect to the above claim limitations. See Ariad
Pharms., 598 F.3d at 1351; App. Br. 11-15. In particular, the Specification
does not need to recite the disputed limitations in haec verba. See Ariad
Pharms., 598 F.3d at 1352. We agree with Appellants that the cite excerpts
of the Specification describe the invention with respect to the disputed
limitations. See App. Br. 11-14. Therefore, the "specification ...
describe[ s] an invention understandable to th[ e] skilled artisan and show[ s]
that the inventor actually invented the invention claimed" with respect to the
above claim limitations. Ariad Pharms., 598 F.3d at 1351.
Accordingly, we reverse the Examiner's rejection of claims 1-7, 9,
21, and 22 under pre-AIA 35 U.S.C. § 112, first paragraph.
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Claim 10-19 recite similar limitations, and the Examiner rejects those
claims for similar reasons. See Final Act. 14. Therefore, for similar reasons,
we reverse the Examiner's rejection of claims 10-19 under pre-AIA 35
U.S.C. § 112, first paragraph.
35 u.s.c. § 102
We have reviewed the Examiner's anticipation rejection in light of
Appellants' contentions and the evidence of record. We concur with
Appellants' contention that the Examiner erred in finding the cited portions
of Duvall disclose "a first computer processor in communication with the
plurality of diverse point of sale systems, wherein each diverse point of sale
system of the plurality diverse point of sale systems generates non-
compatible point of sale data," as recited in independent claim 1 ( emphases
added). See App. Br. 15-16.
The Examiner cites Duvall' s paragraphs 7-9 and Figures 1-2 for
disclosing the above italicized claim limitations. See Final Act. 14--15; Ans.
7-8. We have reviewed the cited Duvall portions, and they do not describe
"communication with the plurality of diverse point of sale systems, wherein
each diverse point of sale system of the plurality diverse point of sale
systems generates non-compatible point of sale data," as required by claim 1
(emphases added). In particular, paragraphs 13 and 14 of Duvall describe a
single point of sale system in Figures 1 and 2-not "the plurality of diverse
point of sale systems." See App. Br. 16. Further, the Examiner has not
adequately explained why Duvall's single point of sale system generates
non-compatible point of sale data, as required by claim 1.
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Because the Examiner fails to provide sufficient evidence or
explanation to support the anticipation rejection, we are constrained by the
record to reverse Examiner's rejection of claim 1.
Independent claim 10 recites claim limitations that are substantively
similar to the italicized limitations of claim 1. See claim 10. The Examiner
applies the same findings and conclusions to both claims 1 and 10. See Final
Act. 15. Therefore, for similar reasons, we reverse the Examiner's rejection
of independent claim 10.
We also reverse the Examiner's anticipation rejection of
corresponding dependent claims 2-3, 9, 11, 12, 17-19, 21, and 22.
35 u.s.c. § 103
The Examiner cites an additional reference for the obviousness
rejection of dependent claims 4--7 and 13-16. The Examiner relies on
Duvall in the same manner discussed above in the context of claim 1, and
does not rely on the additional reference in any manner that remedies the
deficiencies of the underlying anticipation rejection. See Final Act. 16-17.
Accordingly, we reverse the Examiner's obviousness rejection of
claims 4--7 and 13-16.
DECISION
We reverse the Examiner's decision rejecting claims 1-7, 9-19, 21,
and 22 under 35 U.S.C. § 101.
We reverse the Examiner's decision rejecting claims 1-7, 9-19, 21,
and 22 under pre-AIA 35 U.S.C. § 112, first paragraph.
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We reverse the Examiner's decision rejecting claims 1-3, 9-12, 17-
19, 21, and 22 under pre-AIA 35 U.S.C. § 102.
We reverse the Examiner's decision rejecting claims 4--7 and 13-16
under pre-AIA 35 U.S.C. § 103.
REVERSED
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