Ex parte William King

Ex parte GUY PHILLIP WILLIAM KING and CLARK GUO Appeal 2018-004985^[1] Technology Center 3600

Application 14/050, 862^[2]

United States Patent and Trademark Office, Patent Trial and Appeal Board

July 10, 2019

FILING DATE 10/10/2013

Before HUBERT C. LORIN, NINA L. MEDLOCK, and MATTHEW S. MEYERS Administrative Patent Judges.

DECISION ON APPEAL

MEYERS, ADMINISTRATIVE PATENT JUDGE.

STATEMENT OF THE CASE

Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's Final Rejection of claims 30-46, 48, and 49, which constitute all the claims pending in this Application. We have jurisdiction under 35 U.S.C. § 6(b).

We AFFIRM.

CLAIMED INVENTION

Appellants' claims "relate generally to methods and systems for ranking information items for display" and more particularly to "display of information items on a website according to a ranking determined for each of the items based on feedback input received in relation to the items." Spec. ¶ 1.

Claims 30, 48, and 49 are the independent claims on appeal. Claim 30, reproduced below with bracketed notations added, is illustrative of the claimed subject matter:

30. A method of ranking or categorizing coupons and other promotional offers distributed over the Internet, the method comprising:

[1] obtaining data describing a plurality of promotional offers, at least some of the promotional offers including a discount offered by a merchant that is redeemable at a website of the merchant by entering a coupon code in a checkout page of the website of the merchant;

[2] obtaining, for each of the plurality of promotional offers, a plurality of values from consumers assessing the respective promotional offer, the plurality of values each having a respective age indicative of a time at which a consumer provided an assessment of the respective promotional offer;

[3] calculating, with a processor, for each of the plurality of the promotional offers, a score for the respective promotional offer based, at least in part, on the respective plurality of values and ages of the respective plurality of values, wherein a contribution of a value among the respective plurality of values toward the score diminishes with the age of the value; and

[4] ranking or categorizing the plurality of offers based on the calculated scores.

REJECTIONS

Claims 3(M6, 48, and 49 are rejected under 35 U.S.C. § 101 as directed to a judicial exception without significantly more.

Claims 30-34, 37-39, 41-44, 46, 48, and 49 are rejected under 35 U.S.C. § 103 as unpatentable over Kast et al. (US 2013/0066822 Al, pub. Mar. 14, 2013) ("Kast") Siegel, Jr. et al. (US 2002/0032629 Al, pub. Mar. 14, 2002) ("Siegel"), and Li et al. (US 2008/0270231 Al, pub. Oct. 30, 2008) ("Li").

Claims 35 and 36 are rejected under 35 U.S.C. § 103 as unpatentable over Kast, Siegel, Li, and Yoshida et al. (US 2008/0256002 Al, pub. Oct. 16, 2008).

Claim 40 is rejected under 35 U.S.C. § 103 as unpatentable over Kast, Siegel, Li, and Masuyama et al. (US 2006/0200395 Al, pub. Sept. 7, 2006) ("Masuyama").

Claim 45 is rejected under 35 U.S.C. § 103 as unpatentable over Kast, Siegel, Li, and Rapoport (US 2008/0313551 Al, pub. Dec. 18, 2008).

ANALYSIS

Patent-Ineligible Subject Matter

Independent Claims 30, 48, and 49, and Dependent Claims 31-42 and 44- 46

Appellants argue claims 30-42, 44-46, 48, and 49 as a group (Appeal Br 4-12; Reply Br. 2-7). We select independent claim 30 as representative. Claims 31-42, 44-46, 48, and 49 stand or fall with claim 30. See 37 C.F.R. §41.37(c)(1)(iv).

Under 35 U.S.C. § 101, 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. E.g., 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 id. 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 mental processes (Gottschalk v. 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 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 176; 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 andFlook); 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 Mayo/Alice 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 (quotation marks 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. (alterations in original) (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 § 101. USPTO, 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) ("2019 Revised Guidance"). 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, i.e., that "apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception." See 2019 Revised Guidance, 84 Fed. Reg. at 53; see also MPEP §§ 2106.05(a)-(c), (e)-(h).

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. See 2019 Revised Guidance.

Appellants argue that the Examiner's rejection is in error because "the Examiner applied the wrong test and has not established & prima facie case of patent [ineligibility." Appeal Br. 6; see also Reply Br. 2-3. According to Appellants, the Examiner only determined that the claims include an abstract idea, and did not "analyze whether the claims are directed to an abstract idea." Id. Appellants' arguments are not persuasive.

In rejecting the pending claims under 35 U.S.C. § 101, the Examiner analyzed the claims using the Mayo/Alice two-step framework. See Final Act. 2-6, 17-29; see also Ans. 3-6. The Examiner determined that the claims are "directed towards a method for ranking information items for display." Final Act. 2. The Examiner also determined that the claimed "steps can be performed mentally or with pen and paper" (Final Act 20; see also Ans. 4), which the Examiner considered to be an abstract idea. The Examiner also determined that claim 30 "includes an additional abstract idea" (Final Act. 3) inasmuch as the claimed calculation of a score is similar to the abstract idea identified in Flook (437 U.S. at 594). The Examiner further determined that independent claim 30 does not include additional elements or a combination of elements sufficient to transform the claim into a patent-eligible...