Michael TienkenDownload PDFPatent Trials and Appeals BoardSep 4, 201914036647 - (D) (P.T.A.B. Sep. 4, 2019) Copy Citation 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. 14/036,647 09/25/2013 Michael TIENKEN 0502-006 7034 113648 7590 09/04/2019 Patent Portfolio Builders, PLLC P.O. Box 7999 Fredericksburg, VA 22404-7999 EXAMINER CROSS, MICHAEL J ART UNIT PAPER NUMBER 3621 NOTIFICATION DATE DELIVERY MODE 09/04/2019 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): Mailroom@ppblaw.com eofficeaction@appcoll.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte MICHAEL TIENKEN ____________ Appeal 2018-006851 Application 14/036,647 Technology Center 3600 ____________ Before MAHSHID D. SAADAT, JENNIFER L. McKEOWN, and JASON M. REPKO, Administrative Patent Judges. McKEOWN, Administrative Patent Judge. DECISION ON APPEAL Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s decision to reject claims 1–20. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 According to Appellant, the real party in interest is THE MEYERS PRINTING COMPANIES, INC. App. Br. 3. Appeal 2018-006851 Application 14/036,647 2 STATEMENT OF THE CASE Appellant’s disclosed and claimed invention relates “[s]ystems and methods of distributing promotions involve distributing unique Uniform Resource Locators (URLs) that can be redeemed as part of a promotion.” Abstract. Claim 1 is illustrative of the claimed invention and reads as follows: 1. A method, comprising: receiving, by a promotion server from a user’s device, a Uniform Resource Locator (URL) searching, by the promotion server, a database of unique URLs for a match with the received URL, wherein each of the unique URLs is associated with a unique promotional reward; determining, by the promotion server, the unique promotional reward associated with the received URL; and providing, by the promotion server, the user's device with a web page containing the unique promotional reward or a mobile application as the unique promotional reward. THE REJECTIONS The Examiner rejected claims 1–20 under 35 U.S.C. § 101 as directed to patent ineligible subject matter. Final Act. 6–9. The Examiner rejected claims 1, 2, and 4–20 under 35 U.S.C. § 103 as unpatentable over Gillenson (US 2010/0250356 A1; Sept. 30, 2010), Kogure (US 2008/0027813 A1; Jan. 31, 2008), and Gilman (US 2010/0174596 A1; July 8, 2010). Final Act. 10–17. The Examiner rejected claim 3 under 35 U.S.C. § 103 as unpatentable over Gillenson, Kogure, Gilman, and Vidya Sagar (US 2007/0043879 A1; Feb. 22, 2007; “Vidya”). Final Act. 17–18. Appeal 2018-006851 Application 14/036,647 3 ANALYSIS THE § 101 REJECTION Claims 1–20 Based on the record before us, Appellant has not persuaded that the Examiner erred in rejecting claims 1–20 as directed to patent ineligible subject matter. An invention is patent-eligible if it claims a “new and useful process, machine, manufacture, or composition of matter.” 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. Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014). 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. Kappos, 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 Appeal 2018-006851 Application 14/036,647 4 mental processes (Gottschalk v. Benson, 409 U.S. 63, 69 (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 183 n.7 (quoting Corning v. Burden, 56 U.S. 252, 267–68 (1853))); 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 turn 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 Appeal 2018-006851 Application 14/036,647 5 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. The PTO recently published revised guidance on the application of section 101. USPTO, 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Memorandum”). Under that 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); and (2) additional elements that integrate the judicial exception into a practical application (see MANUAL OF PATENT EXAMINING PROCEDURE (“MPEP”) §§ 2106.05(a)–(c), (e)–(h) (9th ed. 2018)). See Memorandum, 84 Fed. Reg. at 52, 55–56. 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 are 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. Appeal 2018-006851 Application 14/036,647 6 See Memorandum, 84 Fed. Reg. at 56. Analysis – Revised Step 1 In step one we consider whether the claimed subject matter falls within the four statutory categories of patentable subject matter identified by 35 U.S.C. § 101: process, machine, manufacture, or composition of matter. The claimed invention here recites a process including a number of steps. Accordingly, the claimed invention falls within the process category. Analysis – Revised Step 2A Under the Memorandum, in prong one of step 2A we look to whether the claims recite a judicial exception. The claimed invention includes “receiving, by a promotion server from a user’s device, a Uniform Resource Locator (URL);” “searching, by the promotion server, a database of unique URLs for a match with the received URL, wherein each of the unique URLs is associated with a unique promotional reward;” “determining, by the promotion server, the unique promotional reward associated with the received URL;” and “providing, by the promotion server, the user's device with a web page containing the unique promotional reward or a mobile application as the unique promotional reward.” Claim 16 additionally recites “wherein the URL is a multi-use URL, the method further comprising: incrementing, by the promotion server, a number of redemptions of a URL in the database matching the received URL, wherein the number of redemptions of the URL are limited to a predetermined number of redemptions.” At a high level, the claimed invention recites using a URL to determine a unique promotional reward to provide to a user. The claimed invention, thus, recites commercial interactions, e.g., providing advertising Appeal 2018-006851 Application 14/036,647 7 or promotions to users. See also Spec. ¶ 1 (discussing how “[v]arious types of promotions have been used to drive sales of products and services.”). As such, the claimed invention recites certain methods of organizing human activity, which is an abstract idea. See, e.g., Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014) (finding the claimed “idea of showing an advertisement before delivering free content” abstract); Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1369 (Fed. Cir. 2015) (finding that “tailoring content based on the viewer’s location or address” or navigation data was abstract and further noting that “[t]here is no dispute that newspaper inserts had often been tailored based on information known about the customer—for example, a newspaper might advertise based on the customer’s location. Providing this minimal tailoring—e.g., providing different newspaper inserts based upon the location of the individual—is an abstract idea.”); see also Ans. 3 (identifying the claimed abstract idea as “correlating online user purchase activity with location information, which amounts to a certain method of organizing human activity.”). With respect to claim 16, the claimed invention also tracks the use of the promotion by incrementing a number. Incrementing a number is a mathematical calculation and, thus, claim 16 recites a mathematical concept, which is an abstract idea. Under prong two of revised step 2A, we determine whether the recited judicial exception is integrated into a practical application of that exception by: (a) identifying whether there are any additional elements recited in the claim beyond the judicial exception(s); and (b) evaluating those additional elements individually and in combination to determine whether they integrate the exception into a practical application. Appeal 2018-006851 Application 14/036,647 8 The claimed invention additionally recites “a promotion server” and a “user device.” We determine that these limitations individually and with the claimed invention in combination does not integrate the exception into a practical application. As the Examiner explains, the claimed invention does no “more than collect, store, display, and compare data to optimize a firm’s marketing objective on a generic computer.” Final Act. 4. Further, “[t]he method, system, and/or computer readable medium claims do not, for example, purport to improve the functioning of the computer itself. Nor do they effect an improvement in any other technology or technical field.” Id. Appellant, in particular, alleges that the claimed invention is similar to the claims found eligible in DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014). Namely, Appellant argues that: In DDR Holdings, the claims were “directed to automatically generating and transmitting a web page in response to activation of a link using data identified with a source web page having certain visually perceptible elements.” Similarly, the pending claims are directed to providing a web page, which necessarily involves generating and transmitting the web page, in response to activation of a URL using visually perceptible data obtained from a user’s device. App. Br. 14 (citations omitted). We disagree. The Federal Circuit explains that the claims at issue in DDR Holdings specified 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. Instead of the computer network operating in its normal, expected manner by sending the website visitor to the third-party website that appears to be connected with the clicked advertisement, the claimed system generates and directs the visitor to the above-described hybrid web page that presents Appeal 2018-006851 Application 14/036,647 9 product information from the third-party and visual “look and feel” elements from the host website. When the limitations of the [disputed claims] are taken together as an ordered combination, the claims recite an invention that is not merely the routine or conventional use of the Internet. DDR Holdings, 773 F.3d at 1258–59. In other words, the claimed invention in DDR Holdings did not merely use the internet but rather provided a novel way for how interactions on the internet operated. In contrast, the claimed invention uses the computer as tool to receive URL data, compare it to a database to find corresponding promotion, and transmit the corresponding promotion along with a webpage. As such, the claimed invention does not provide a solution to a technical problem and merely uses the computer as a tool to implement the abstract idea. See, e.g., Spec. ¶¶ 2–3 (describing the known process of supplying promotional codes to users and merely replacing the provided code with a URL). With respect to claim 2, we note that the steps of transmitting data, such as receiving a URL, and processing data, such as comparing data, are insignificant extra-solution activity. Specifically, the claimed invention’s receiving and processing data is merely conventional data gathering and analysis. See MPEP § 2106.05(g); OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015); Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016). As such, based on the record before us, we determine that the claimed invention is not integrated into a practical application. Analysis – Revised Step 2B Under step 2B, we determine that the claimed invention does not add significantly more to the abstract idea. As the Examiner explains, the claimed limitations of Appeal 2018-006851 Application 14/036,647 10 [u]sing a computer to obtain data, using data to identify other data, and filtering data are some of the most basic functions of a computer. All of these computer functions are well-understood, routine, conventional activities previously known to the industry. In summary, each step does no more than require a generic computer to perform generic computer functions. Final Act. 4. See also Elec. Power Grp., 830 F.3d at 1355 (finding that use of “conventional computer, network, and display technology for gathering, sending, and presenting the desired information” does not add significantly more to the claimed abstract idea); Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat’l Ass’n, 776 F.3d 1343, 1347 (Fed. Cir. 2014) (discussing that data collection, recognition, and storage is well-known); CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1375 (Fed. Cir. 2011) (“[T]he incidental use of a computer to perform the [claimed process] does not impose a sufficiently meaningful limit on the claim’s scope.”). We note that Appellant also argues that the Examiner only consider claim 1 and fails to consider the limitations of dependent claims 3–15 and 17–20. Appellant, however, fails to explain persuasively how any limitations alone, or in combination, implements the recited abstract idea into a practical application or adds significantly more. Appellant’s blanket assertions, without more, are unavailing. Therefore, based on the record before us, we are not persuaded of error in the Examiner’s determination that the appealed claims are directed to patent ineligible subject matter. Accordingly, we affirm the Examiner’s decision to reject claims 1–20 as directed to patent ineligible subject matter. Appeal 2018-006851 Application 14/036,647 11 THE § 103 REJECTION BASED ON GILLENSON, KOGURE, AND GILMAN Claims 1, 2, and 4–20 Based on the record before us, we are persuaded that the Examiner erred in finding that claims 1, 2, and 4–20 are unpatentable over Gillenson, Kogure, and Gilman. As an initial matter, we note that the Examiner does not identify each limitation of the claimed invention and explain how the cited references teach that particular limitation. Instead, the Examiner generally describes that Gillenson teaches a system of delivering unique promotional awards, but does not “rely entirely on the use of URL’s for the comparisons and additional steps.” Final Act. 10 (citations omitted). The Examiner refers to Kogure as disclosing “a system of distributing advertisements based on URL monitoring, comparing, storing (database) in a manner similar to the Applicant” and Gillman as teaching “a method of mobile content and advertisement distribution that will initiate a download of a mobile application initiated by a URL.” Id. at 10–11 (citations omitted). The Examiner then points to “the competitive business climate” as “a profit- driven motive” as to why the cited combination would be obvious. Id. at 12. Appellant argues that there is insufficient evidence in the record to support the conclusion of obvious (App. Br. 16) and further argues that the Examiner’s “generic motivation relied upon for the obviousness rejections does not provide evidence that one skilled in the art would have made the proposed modifications” to render the claimed invention obvious. App. Br. 25. We agree. As Appellant points out, generally identifying “a profit driven motive to maximize the profitability of goods and services that are provided or marketed to customers” does not “explain how Kogure's Appeal 2018-006851 Application 14/036,647 12 disclosure of advertisement display [with URLs printed on fuel cartridges] would be incorporated into Gillenson. Id. at 17. Moreover, it is not clear how the Examiner is modifying the prior art to arrive at the claimed invention. As noted above, the Examiner only generally discusses each cited prior art reference, for example, pointing out similarities with the claimed invention. See, e.g., Final Act. 10–12. In order for us to sustain the Examiner’s rejection, we would need to resort to impermissible speculation or unfounded assumptions or rationales to supply deficiencies in the factual bases of the rejection before us. In re Warner, 379 F.2d 1011, 1017 (CCPA 1967). As such, based on the record before us, we are persuaded of error. Accordingly, we reverse the Examiner’s decision to reject claims 1, 2, and 4–20 as unpatentable over Gillenson, Kogure, and Gilman. THE § 103 REJECTION BASED ON GILLENSON, KOGURE, GILMAN, AND VIDYA Claim 3 Based on the record before us, we are persuaded that the Examiner erred in finding that claim 3 are unpatentable over Gillenson, Kogure, and Gilman. For the reasons discussed above, we similarly find that the Examiner fails to sufficiently support the rejection of claim 3. As such, we reverse the rejection. Appeal 2018-006851 Application 14/036,647 13 DECISION We affirm the Examiner’s decision to reject claims 1–20 as directed to patent ineligible subject matter, but reverse the Examiner’s decision to rejection claims 1–20 as obvious over the cited prior art combinations. Because we have affirmed at least one ground of rejection with respect to each claim on appeal, the Examiner’s decision is affirmed. See 37 C.F.R. § 41.50(a)(1). No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED Copy with citationCopy as parenthetical citation