Ex Parte ALTBERG et al

Patent Trials and Appeals Board

May 16, 2019

12128449 - (D) (P.T.A.B. May. 16, 2019)

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.
12/128,449 05/28/2008 Ebbe ALTBERG 147296-200600/US 1336
64494 7590 05/20/2019
GREENBERG TRAURIG, LLP (SV)
c/o: Greenberg Traurig LLP - Chicago Office
77 West Wacker Drive, Suite 3100
Intellectual Property Department
Chicago, IL 60601
EXAMINER
LIU, I JUNG
ART UNIT PAPER NUMBER
3697
NOTIFICATION DATE DELIVERY MODE
05/20/2019 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):
gtipmail @ gtlaw. com
clairt@gtlaw.com
cadanoc@gtlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte EBBE ALTBERG, SCOTT FABER,
RON HIRSON, and SEAN VAN DER LINDEN
Appeal 2018-001594
Application 12/128,4491
Technology Center 3600
Before JASON V. MORGAN, DAVID J. CUTITTAII, and
PHILLIP A. BENNETT, Administrative Patent Judges.
MORGAN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Introduction
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s Final
Rejection of claims 1, 2, 4, 10, 11, 15, 17, 18, and 21-27. Claims 3, 5-9,
12-14, 16, and 19-20 are canceled or withdrawn. Appeal Br. 23-25. We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellants identify Ingenio Acquisition, LLC, as the real party in interest.
Appeal Br. 2.
Appeal 2018-001594
Application 12/128,449
Summary of disclosure
Appellants disclose converting “a free connection for real time
communications between people into a dynamically priced communication
session to facilitate the delivery of services over the established connection.”
Abstract.
Representative claim
1. A method, comprising:
assigning, by a computing device, a first reference for a first
user and a second reference for a second user, the first reference
representing contact information associated with the first user
and the second reference representing contact information
associated with the second user, wherein the second reference is
selected from a pool of reference types;
receiving a request for communication with the second user
from the first user, the request for communication including the
second reference;
selecting a communication medium for establishing a
connection based on a communication medium identified in the
second reference;
establishing, by the computing device via the identified
communication medium, a connection for real time
communications between the first user and the second user for
the second user to provide a service to the first user over the
connection, wherein the connection is established without
charge to the first user for a predetermined period of time;
prior to establishing the connection, providing the first user
with a plurality of proposed prices for the service provided by
the second user beyond the predetermined period of time;
receiving, by the computing device after the connection is
established, a selection by the first user of a price from the
plurality of proposed prices for the service to be provided by
the second user;
monitoring the connection for a termination event; and
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charging the first user on behalf of the second user according to
the selected price for the service provided by the second user
beyond the predetermined period of time in response to
identifying that a termination event has occurred.
Rejections
The Examiner rejects claims 26 and 27 under 35 U.S.C. § 112, second
paragraph, as being indefinite. Final Act. 20.
The Examiner rejects claims 1, 2, 4, 10, 11, 15, 17, 18, and 21-27
under 35 U.S.C. § 101 as being directed to patent-ineligible subject matter.
Final Act. 2-19.
35 U.S.C. § 112, SECOND PARAGRAPH
Appellants do not dispute the Examiner’s 35 U.S.C. § 112, second
paragraph, rejection of claims 26 and 27 based on insufficient antecedent
basis for the preamble recitation of “the network device” in each claim.
Final Act. 20; Ans. 2. Accordingly, we summarily affirm this rejection.
35 U.S.C. § 101
Principles of law
To be statutorily patentable, the subject matter of an invention must be
a “new and useful process, machine, manufacture, or composition of matter,
or [a] new and useful improvement thereof.” 35 U.S.C. § 101. There are
implicit exceptions to the categories of patentable subject matter identified
in § 101, including: (1) laws of nature; (2) natural phenomena; and (3)
abstract ideas. Alice Corp. v. CLSBankInt’l, 573 U.S. 208, 216 (2014).
The Supreme Court has set forth a framework for distinguishing patents with
claims directed to these implicit exceptions “from those that claim patent-
eligible applications of those concepts.” Id. at 217 (citing Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66 (2012)). The
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Application 12/128,449
evaluation follows a two-part analysis: (1) determine whether the claim is
directed to a patent-ineligible concept, e.g., an abstract idea; and (2) if so,
then determine whether any element, or combination of elements, in the
claim is sufficient to ensure that the claim amounts to significantly more
than the patent-ineligible concept itself. See id. at 217-18.
“[A]ll inventions at some level embody, use, reflect, rest upon, or
apply laws of nature, natural phenomena, or abstract ideas.” Mayo, 566 U.S.
at 71. We ‘“must be careful to avoid oversimplifying the claims’ by looking
at them generally and failing to account for the specific requirements of the
claims.” McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299,
1313 (Fed. Cir. 2016) (quoting TLI Commc’ns LLC Patent Litig., 823 F.3d
607, 611 (Fed. Cir. 2016)). We, therefore, look to whether: (1) the claims
focus on a specific means or method that improves the relevant technology
or (2) the claims are instead directed to a result or effect that itself is the
abstract idea and merely invoke generic processes and machinery. See
Enfish, LLCv. Microsoft Corp., 822 F.3d 1327, 1335-36 (Fed. Cir. 2016).
That is, we look to whether the claims are “specifically designed to achieve
an improved technological result in conventional industry practice.” McRO,
837 F.3d at 1316 (emphasis added) (citing Alice, 573 U.S. at 222-24).
If a claim proves to be unpatentable as a result of the two-part
analysis, no additional determination regarding preemption is necessary.
“While preemption may signal patent ineligible subject matter, the absence
of complete preemption does not demonstrate patent eligibility,” as
“questions on preemption are inherent in and resolved by the § 101
analysis.” Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379
(Fed. Cir. 2015).
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The U.S. Patent and Trademark Office (USPTO) recently published
revised guidance on the application of the two-part analysis. USPTO
Memorandum of January 7, 2019, 2019 Revised Patent Subject Matter
Eligibility Guidance, 84 Fed. Reg. 50 (“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) (see id. at 54 (step 2A - prong one)); and
(2) additional elements that integrate the judicial exception into a
practical application (see id. at 54-55 (step 2A - prong two); 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 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.
See Memorandum, 84 Fed. Reg. at 56 (step 2B).
Memorandum step 2A —prong one
In rejecting claim 1 under 35 U.S.C. § 101, the Examiner determines
the claim is “directed to the abstract idea of charging based on connecting
people via the identified communication.” Final Act. 2. The Examiner
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determines that “[cjharging the user according to the selected price for the
service in response to identifying that a termination event has occurred is as
fundamental to business as the economic concepts that were identified as
abstract ideas by the Supreme Court [or the Federal Circuit], such as
mitigating intermediated settlement (Alice Corp.), [cjreating a contractual
relationship (BuySAFE[2]) and [o]ffer-based optimization (01P Tech[3]).”
Final Act. 4.
We agree with the Examiner’s determination that claim 1 recites a
patent-ineligible abstract idea. Claim 1 recites: (1) “providing the first user
with a plurality of proposed prices for the service provided by the second
user beyond the predetermined period of time”; (2) “establishing ... a
connection for real time communications between the first user and the
second user for the second user to provide a service to the first user over the
connection, wherein the connection is established without charge to the first
user for a predetermined period of time”; (3) “receiving ... a selection by
the first user of a price from the plurality of proposed prices for the service
to be provided by the second user”; and (4) “charging the first user on behalf
of the second user according to the selected price for the service provided by
the second user beyond the predetermined period of time in response to
identifying that a termination event has occurred.” More succinctly, claim 1
recites providing a customer a price list for a service, facilitating a free trial
period for the service, receiving a price selection from the customer, and
charging the customer for service time exceeding the free trial period.
2 BuySAFE, Inc. v. Google, Inc., 765 F.3d 1350 (Fed. Cir. 2014).
3 OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359 (Fed. Cir. 2015).
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Allowing a customer to select a service price (e.g., to provide an
incentive to purchase more of the service in advance), giving the customer a
trial period for the service, and charging the customer for use of the service,
represent “advertising, marketing or sales activities or behaviors” and
“agreements in the form of contracts.” Memorandum, 84 Fed. Reg. at 52;
see also Ans. 3—4. Thus, claim 1 recites an abstract idea in the form of
certain methods of organizing human activity (commercial or legal
interactions4). See Memorandum, 84 Fed. Reg. at 52; see also buySafe, 765
F.3d at 1355 (narrowing of long-familiar commercial transactions to
particular relationships does not make an abstract idea patent-eligible);
Ans. 5-6.
For these reasons, we agree with the Examiner that claim 1 recites an
abstract idea.
Memorandum step 2A —prong two
Appellants concede “that ‘charging a user’ is an economic element,”
but argue the Examiner’s analysis is deficient because the question under
Alice step one “is not whether a claim ‘includes’ an economic practice, but
rather if a claim is directed to that practice.” Appeal Br. 11. In particular,
Appellants contend the Examiner erroneously ignores “the specific
limitations regarding the connection setup procedure regarding references
used in lieu of fixed connection identifiers.” Id. at 13; see also id. at 15;
4 The Examiner determines that claim 1 is directed to a fundamental
economic practice. See, e.g., Final Act. 4; Ans. 3—4. Although claim 1 is
better characterized as being directed to commercial or legal interactions,
both are recognized as abstract ideas in the form of certain methods of
organizing human activity. See Memorandum 84 Fed. Reg. at 52.
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Reply Br. 2 (“the Examiner has completely ignored the technical limitations
of the claim”).
The Examiner determines that the disputed recitations should be
analyzed under Alice step two rather than as part of the Alice step one
analysis of whether the claim is directed to patent-ineligible subject matter
such as an abstract idea. See Ans. 4. Nonetheless, it is appropriate for us to
review Appellants’ arguments, and the record before us, to ascertain whether
these recitations represent additional elements that integrate the underlying
abstract idea into a practical application (i.e., as part of the Alice step one
analysis). See Memorandum, 84 Fed. Reg. at 54. Based on such review, we
determine that the additional recitations of claim 1 do not integrate the
underlying abstract idea into a practical application.
Claim 1 recites:
assigning, by a computing device, a first reference for a first user
and a second reference for a second user, the first reference
representing contact information associated with the first user
and the second reference representing contact information
associated with the second user, wherein the second reference is
selected from a pool of reference types;
Appellants contend the claimed “use of references allow for multiple
types of connections and enables the management and monitoring of the
connections.” Appeal Br. 13. Although this argument is consistent with the
claimed selection of “a communication medium for establishing a
connection based on a communication medium identified in the second
reference” (and thus the establishing and monitoring recitations that relate to
such selection), the use of such references does not reflect an improvement
in the functioning of a computer or an improvement in another technology or
technical field. See Memorandum, 84 Fed. Reg. at 55. Nor does such
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selection require “a particular machine or manufacture that is integral” to
claim 1. Id. Rather, the claimed use of references generally links the use of
the underlying abstract idea to a broad set of technological environments
(i.e., communication mediums).
Appellants argue the claimed references are “used in lieu of fixed
connection identifiers.” Appeal Br. 13. The Specification, however,
discloses that a reference can be as simple as a telephone number, which
may or may not be displayed. See, e.g., Spec. 218, 240, Figs. 12, 13.
Appellants do not show where the Specification distinguishes references
such as telephone numbers from “fixed connection identifiers.” Because
Appellants’ argument is not commensurate with the scope of claim 1, we are
unpersuaded that the use of references as claimed is sufficient to integrate
the underlying abstract idea into a practical application.
The remaining recitations merely relate to the automation or partial
automation of processes that human customers and services providers would
typically follow in marketing service offers (e.g., through listings that
include contact information and prices), accepting an offer (e.g., by calling a
service provider), selecting a price point (something that could be done, for
example, by providing credit card information and informing the service
provider how many minutes of services the customer would like to
purchase), and charging for services used beyond a trial period. Thus, the
recitations of claim 1 lack limited rules structured to reflect a specific
implementation that differs from what human customers and services
providers would likely have used. See McRO, Inc. v. Bandai Namco Games
Am. Inc., 837 F.3d 1299, 1316 (Fed. Cir. 2016). Therefore, we are unable to
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identify any other additional recitations that integrate the underlying abstract
idea into a practical application.
Memorandum step 2B
Appellants contend that, even if claim 1 is directed to an abstract idea,
claim 1 also recites a “specific implementation of a connection setup
procedure [that] clearly adds ‘significantly more’ to the general idea of
charging users.” Appeal Br. 17.
Appellants argue the claimed “solution is unconventional as
evidenced by the fact that the claims are not found in the prior art.” Id. at
19; see also Reply Br. 4 (the Examiner failed to consider “the combination
of how [the claim] components are connected”). The search for an
“inventive concept” analysis, however, 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,
573 U.S. at 217-18 (citation omitted, alteration in original). A novel and
nonobvious claim directed to a purely abstract idea is, nonetheless, patent-
ineligible. See Mayo, 566 U.S. at 90; see also Ass ’n for Molecular
Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 591 (2013)
(“Groundbreaking, innovative, or even brilliant discovery does not by itself
satisfy the § 101 inquiry”). Therefore, the purported novelty of the claimed
invention does not show that the claim 1 is directed to patent-eligible subject
matter.
Appellants cite to BASCOM for the holding that “an inventive concept
can be found in the non-conventional and non-generic arrangement of
known, conventional pieces.” Appeal Br. 18 (citing BASCOM Glob.
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Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1350 (Fed. Cir.
2016)). In BASCOM, the Federal Circuit distinguished between merely
reciting “the abstract idea of filtering content along with the requirement to
perform it on the Internet, or to perform it on a set of generic computer
components” and claims that recite “a specific, discrete implementation of
the abstract idea of filtering content” in determining a claim was patent-
eligible when it recited a design that provided “a technical improvement
over prior art ways of filtering such content.... [that] were either
susceptible to hacking and dependent on local hardware and software, or
confined to an inflexible one-size-fits-all scheme.” BASCOM, 827 F.3d at
1350. Appellants do not show, and we cannot find, any comparable
technical improvement in claim 1, even when the additional recitations are
considered in combination.
Appellants also argue that, like with Amdocs (Isr.) Ltd. v. Openet
Telecom, Inc., 841 F.3d 1288 (Fed. Cir. 2016), claim 1 includes “an
unconventional technological solution, namely, the use of independent
references in establishing a connection between users over the Internet and
the specific architecture utilized to track and monitor these connections
which has no pre-Internet analog.” Appeal Br. 19. The patent-eligible
claims in Amdocs included recitations for achieving “a technological
solution to a technological problem specific to computer networks.”
Amdocs, 841 F.3d at 1301; see also id. at 1303, 1306.
Appellants argues claim 1 uses technology to solve technological
“problems such as the inability for Internet-based advertisers to provide
information in a limited medium.” Appeal Br. 19 (citing Spec. 7-8). The
cited portions of the Specification, however, merely relate to the use of
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telephone systems to conduct business and the use of the Internet to
advertise. Spec. 7-8. Rather than supporting Appellants’ contentions
that the claimed invention solves a technological problem, the cited portions
of the Specification instead show that the claimed invention at best
represents an implementation of the underlying abstract idea in a particular
technological environment, a narrowing insufficient to make the claimed
invention patent-eligible. See Alice, 573 U.S. at 222-23.
We further note that the Specification broadly discloses a variety of
generic technologies suitable for the additional elements, i.e., the
“computing device” and the “communication medium.” For example, the
Specification discloses that the communication medium can be a “telephonic
apparatus” such as “a softphone, a cellular phone, or a smart phone.” Spec.
41, 44; see also id. Fig. 10. The Specification also discloses that a “user
may be connected to the advisor via a peer to peer network, using a
softphone, or an instant messaging application, which may be a standalone
application or a built-in or plug-in module or an applet of a web browser.”
Id. 223; see also id. Fig. 9. The Specification further discloses that the
claimed “computing device” is merely generic hardware. See 192-198,
Fig. 10. These broad, generic descriptions illustrate that the technologies
recited in claim 1 do not indicate an inventive concept is present in claim 1,
but instead represent an addition to the underlying abstract idea of well-
understood, routine, conventional technologies previously known and
specified at a high level of generality. See Memorandum, 84 Fed. Reg. at
56.
For these reasons, we determine the additional elements do not make
claim 1 significantly more than the underlying abstract idea. Accordingly,
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we sustain the Examiner’s 35 U.S.C. § 101 rejection of claim 1, and claims
2, 4, 10, 11, 15, 17, 18, and 21-27, which Appellants do not argue
separately.
DECISION
We affirm the Examiner’s decision rejecting claims 1, 2, 4, 10, 11, 15,
17, 18, and 21-27.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 41.50(f).
AFFIRMED
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