Ex Parte Zimmerman et al

Patent Trial and Appeal BoardSep 21, 2018

10388863 (P.T.A.B. Sep. 21, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 10/388,863 03/14/2003 27752 7590 09/25/2018 THE PROCTER & GAMBLE COMPANY Global IP Services Central Building, C9 One Procter and Gamble Plaza CINCINNATI, OH 45202 FIRST NAMED INVENTOR Paul Jacob Zimmerman JR. 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. 8882RL$ 3976 EXAMINER BOYCE, ANDRE D ART UNIT PAPER NUMBER 3623 NOTIFICATION DATE DELIVERY MODE 09/25/2018 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): centraldocket.im @pg.com pair_pg@firsttofile.com mayer.jk@pg.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte PAUL JACOB ZIMMERMAN, JR., DELAINE SUE HAMPTON, KRISTIN LEIGH SHARP, JUNE IRENE HAHN, WILLIAM HARRY ROCKLIN, ERIK DANIEL BARTHEL, TOD RANDALL TAYLOR, ROBIN MATHEWS COX, RICHARD TERRENCE LYNCH, MICHAEL WILLIAM FREELAND, SUSAN TERRY AZMIER, and CHRISTOPHER JOHN HANNAFORD Appeal2017-006236 Application 10/388,863 Technology Center 3600 Before MURRIEL E. CRAWFORD, BIBHU R. MOHANTY, and ROBERT L. KINDER, Administrative Patent Judges. CRAWFORD, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants 1 seek our review under 35 U.S.C. Â§ 134 of the Examiner's final decision rejecting claims 1--4, 6-10, and 12-18. We have jurisdiction over the appeal under 35 U.S.C. Â§ 6(b). 1 The real party in interest is The Procter & Gamble Company. Br. 1. Appeal2017-006236 Application 10/388,863 BACKGROUND Appellants' invention is directed to systems and methods for conducting a virtual test market. Spec. 1. Claim 1 is illustrative: 1. A test market system comprising: a. a virtual launch component, wherein said virtual launch component is capable of generating data regarding product choice probability and is executed via one or more interactive computer based systems, b. a transaction component, wherein said transaction component is capable of generating data regarding product repurchase, and c. a marketing simulation component, wherein said product choice probability data and said product repurchase data are input into said marketing simulation component, and wherein said marketing component contains an agent based model which utilizes said product choice probability data and said product repurchase data. Appellants appeal the following rejection: Claims 1--4, 6-10, and 12-18 under 35 U.S.C. Â§ 101 directed to non- statutory subject matter. PRINCIPLES OF LAW An invention is patent-eligible if it claims a "new and useful process, machine, manufacture, or composition of matter." 35 U.S.C. Â§ 101. The Supreme Court, however, has long interpreted Â§ 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 Bank Int 'l, 134 S. Ct. 2347, 2354 (2014). In determining whether a claim falls within the excluded category of abstract ideas, we are guided in our analysis by the Supreme Court's two- 2 Appeal2017-006236 Application 10/388,863 step framework, described in Mayo and Alice. Id. at 2355 ( citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 75-78 (2012)). In accordance with that framework, we first determine whether the claim is "directed to" a patent-ineligible abstract idea. See Alice, 134 S. Ct. at 2356 ("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."); 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."); Diamond v. Diehr, 450 U.S. 175, 184 (1981) ("Analyzing respondents' claims according to the above statements from our cases, we think that a physical and chemical process for molding precision synthetic rubber products falls within the Â§ 101 categories of possibly patentable subject matter."); Parker v. Flook, 437 U.S. 584, 594--595 (1978) ("Respondent's application simply provides a new and presumably better method for calculating alarm limit values."); Gottschalk v. Benson, 409 U.S. 63, 64 (1972) ("They claimed a method for converting binary-coded decimal (BCD) numerals into pure binary numerals."). The patent-ineligible end of the spectrum includes fundamental economic practices, Alice, 134 S. Ct. at 2357; Bilski, 561 U.S. at 611; mathematical formulas, Parker, 437 U.S. at 594--95; and basic tools of scientific and technological work, Gottschalk, 409 U.S. at 67. On the patent- eligible side of the spectrum are physical and chemical processes, such as curing rubber, Diamond, 450 U.S. at 184 n.7, "tanning, dyeing, making water-proof cloth, vulcanizing India rubber, smelting ores," and a process for manufacturing flour, Gottschalk, 409 U.S. at 69. 3 Appeal2017-006236 Application 10/388,863 If the claim is "directed to" a patent-ineligible abstract idea, we then consider the elements of the claim-both individually and as an ordered combination-to assess whether the additional elements transform the nature of the claim into a patent-eligible application of the abstract idea. Alice, 134 S. Ct. at 2355. This is a search for an "inventive concept"-an element or combination of elements sufficient to ensure that the claim amounts to "significantly more" than the abstract idea itself. Id. In addition, the Federal Circuit has held that if a method can be performed by human thought alone, or by a human using pen and paper, it is merely an abstract idea and is not patent-eligible under Â§ 101. Cy her Source Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1373 (Fed. Cir. 2011) ("[A] method that can be performed by human thought alone is merely an abstract idea and is not patent-eligible underÂ§ 101."). Claims involving data collection, analysis, and display are directed to an abstract idea. Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016) (holding that "collecting information, analyzing it, and displaying certain results of the collection and analysis" are "a familiar class of claims 'directed to' a patent-ineligible concept"); see also In re TL! Commc 'ns LLC Patent Litig., 823 F.3d 607, 611 (Fed. Cir. 2016); Fair Warning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093-94 (Fed. Cir. 2016). Claims that recite an improvement to a particular computer technology have been found patent eligible. See, e.g., McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314--15 (Fed. Cir. 2016) (determining claims not abstract because they "focused on a specific asserted improvement in computer animation"). 4 Appeal2017-006236 Application 10/388,863 ANALYSIS Rejection under 35 U.S.C. Â§ 1 OJ The Examiner determines that the claims are directed to the abstract idea of conducting a test market which includes steps of generating data (for both product choice probability and repurchase), recruiting a plurality of consumers, providing access to a virtual launch environment, gathering data, and utilizing the market simulation. Final Act. 3. The Examiner determines that these steps involve (1) an idea of itself, (2) human activity relating to commercial practices, and (3) comparing new and stored information and using rules to identify organizing information. Id. at 3--4. We agree with determination that the claims are directed to an abstract idea. In our view, the steps of the claims are directed to collection, analysis, and display of data and thus are directed to an abstract idea. The Examiner finds that the other elements of the claims such as a virtual launch component, transaction component, and marketing simulation component do not amount to an improvement to another technology or technical field or the functioning of the computer itself. The Examiner finds that there are no meaningful limitations beyond generally linking the abstract idea to a particular technological environment i.e., implementation via a computer system and therefore require no more than a general purpose computer which performs generic computer functions known in the pertinent industry. Final Act. 4. The Examiner concludes these findings with the determination that the additional claim elements do not provide meaningful limitations to transform the abstract idea into a patent eligible application of the abstract idea. Id. We agree. 5 Appeal2017-006236 Application 10/388,863 We are not persuaded of error on the part of the Examiner by Appellants' argument that the claims do not recite an abstract idea because the claims are directed to tangible machines and processes including real actions of real consumers and gathering data from those actions. Br. 4. The mere presence of physical components in a tangible arrangement (see Br. 5) in the claim does not preclude the claim from being directed to an abstract idea at least because the Court has instructed that the significance of these elements is determined in step two of the Aiayo/Alice framework. The claims in Alice, for example, were not devoid of technical elements, but were determined to be directed to an abstract idea. Cf In re TL!, 823 F.3d at 611 C'[N]ot every claim that recites concrete, tangible components escapes the reach of the abstract-idea inquiry."). We are not persuaded of error on the part of the Examiner by Appellants' argument that the Examiner has failed to provide an abstract idea. Br. 5. As we detailed above, the Examiner clearly provided the abstract idea of conducting a test market which includes steps of recruiting, providing, gathering, and utilizing steps all of which are in essence the collection, analysis and display of data. In view of the foregoing, we will sustain the Examiner's rejection of claim 9. We will also sustain the rejection as it is directed to claims 10, 12, 13, 16, and 18 because the Appellants have not argued the patent eligibility of these claims. We are also not persuaded of error on the part of the Examiner by Appellants' argument that some of the claims, such as claim 1, are directed to systems not methods and as thus are outside of the 35 U.S.C. Â§ 101 analysis. Br. 6. Here, the apparatus claims are directed to the same subject 6 Appeal2017-006236 Application 10/388,863 matter as the method claims. In Alice, the Court noted that despite their format, "the system claims are no different in substance from the method clairns. The method claims recite the abstract idea implemented on a generic computer; the systern clairns recite a handful of generic computer components configured to implement the same idea." Alice, 134 S. Ct. at 2351. "[T]he mere recitation of a generic computer cannot transfonn 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." Id. at 2358 (quoting lvfayo, 566 U.S. at 72) (internal quotations omitted). \Ve are also not persuaded of error on the part of the Examiner by .Appellants argument that based upon the dearth of cited references, no system existed that could accomplish the method of the claims. Br. 7. To the extent Appellants maintain that the limitations of claim 1 necessarily amount to "significantly more" than an abstract idea because the claimed apparatus is allegedly patentable over the prior art, Appellants misapprehend the contro11ing precedent. Although the second step in the Alice/Afayo framework is termed a search for an ''inventive concept," the analysis is not an evaluation of novelty or non-obviousness, but rather, a search for '"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"' Alice, 134 S. Ct. at 2355. A novel and nonobvious claim directed to a purely abstract idea is, nonetheless, patent- ineligible. See Mayo, 132 S. Ct. at 1304. In view of the foregoing, we will sustain the rejection as it is directed to claim 1. We will also sustain the reiection as it is directed to claims 2---4, 7 Appeal2017-006236 Application 10/388,863 6----8, 14, 15, and 17 because the Appellants do not argue the separate eligibility of these claims. DECISION We affirm the Examiner's Â§ 101 rejection. TIME PERIOD No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a). See 37 C.F.R. Â§ 1.136(a)(l) (2009). ORDER AFFIRMED 8