13672508 (P.T.A.B. Aug. 22, 2018)

Ex Parte Banthia et al

Patent Trial and Appeal BoardAug 22, 2018

13672508 (P.T.A.B. Aug. 22, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/672,508 11/08/2012 122422 7590 08/24/2018 Stradling Yocca Carlson & Rauth, P.C. 660 Newport Center Drive, Suite 1600 Newport Beach, CA 92660 FIRST NAMED INVENTOR Vikash Banthia 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. 102978-0003 9737 EXAMINER ZIMMERMAN, MATTHEW E ART UNIT PAPER NUMBER 3684 NOTIFICATION DATE DELIVERY MODE 08/24/2018 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): nbpatents@sycr.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte VIKASH BANTHIA and VISHAL BANTHIA Appeal2017-005788 Application 13/672,508 Technology Center 3600 Before JOHN A. JEFFERY, NORMAN H. BEAMER, and MATTHEW J. McNEILL, Administrative Patent Judges. JEFFERY, Administrative Patent Judge. DECISION ON APPEAL Appellants 1 appeal under 35 U.S.C. Â§ 134(a) from the Examiner's decision to reject claims 1--4 and 6-14. We have jurisdiction under 35 U.S.C. Â§ 6(b). We affirm. STATEMENT OF THE CASE Appellants' invention brokers services between a buyer and a professional service provider by using a software-based system that receives, verifies, and negotiates appointment availabilities and offers while providing privacy to both parties. See generally Abstract. Claim 1 is illustrative: 1 Appellants identify the real party in interest as Zendyplace, Inc. App. Br. 1. Appeal2017-005788 Application 13/672,508 1. A method for brokering purchases of procedural services between a buyer and at least one professional service provider by executing computer executable instructions stored on a non- transitory computer readable medium comprises: providing a buyer account, a provider account, an appointment database, and offer database; receiving an appointment opening from the provider account, wherein the appointment opening contains an offer parameter and a provider identifier; receiving an appointment offer from the buyer account, wherein the appointment offer contains an appointment parameter, an offer value, and a buyer identifier; receiving a transferable payment type from the buyer account, wherein the transferable payment type is associated with the appointment offer; matching the appointment offer to the appointment opening of the appointment database, wherein the appointment offer and the appointment opening are matched by the appointment parameter and the offer parameter, respectively; creating an anonymized appointment offer, wherein the anonymized appointment offer 1s associated with the appointment offer; exporting the anonymized appointment offer to the provider account; receiving an offer acceptance from the provider account, wherein the offer acceptance is for the anonymized offer; exporting the buyer identifier to the provider account, wherein the buyer identifier is associated with the appointment offer; exporting an offer acceptance notification and the provider identifier to the buyer account; providing a provided procedure/service, a location identifier, and an appointment time interval for the offer parameter; providing a desired procedure/service, a location determinant, and an appointment time range for appointment parameter; retrieving the appointment offer from the offer database; 2 Appeal2017-005788 Application 13/672,508 searching the appointment database for the offer parameter matching the appointment parameter; retrieving the appointment opening from the appointment database, if the offer parameter contains the provided procedure/service, the location identifier, and the appointment time interval matching the desired procedure/service, the location determinant, and the appointment time range for the appointment parameter; and sending a refine appointment parameter notification to the buyer account, wherein the refine appointment parameter notification details the appointment parameter could not be matched with the offer parameter in the appointment database, if the offer parameter does not contain the provided procedure/service, the location identifier, and the appointment time interval matching the desired procedure/service, the location determinant, and the appointment time range for the appointment parameter. THE REJECTION The Examiner rejected claims 1--4 and 6-14 under 35 U.S.C. Â§ 101 as directed to ineligible subject matter. Final Act. 2-3. 2 FINDINGS AND CONTENTIONS The Examiner finds that the claimed invention is directed to an abstract idea, namely matching buyers and sellers. Final Act. 2-3; Ans. 3-5. According to the Examiner, the claimed elements do not add significantly more to the abstract idea to render the claimed invention patent-eligible 2 Throughout this opinion, we refer to (1) the Final Rejection mailed April 1, 2015 ("Final Act."); (2) the Appeal Brief filed October 11, 2016 ("Br."); and (3) the Examiner's Answer mailed December 16, 2016 ("Ans."). 3 Appeal2017-005788 Application 13/672,508 because, among other things, the recited steps not only include extra- solution activity, they also (1) do not improve another technology or technical field, (2) do not improve computer functionality, and (3) recite that which is well-understood, routine, and conventional in the field. Final Act. 2-3. Appellants argue that although the claims are directed to matching buyers and sellers, the claimed invention does not preempt that idea because the claims recite a specific way to match buyers and sellers, including steps related to ( 1) anonymization, (2) location identification, and (3) providing an intermediary----elements that are said to add significantly more to the alleged abstract idea. Br. 11-12, 16-18. According to Appellants, the Examiner not only wrongly labeled the claimed invention's essential steps as extra- solution activity, the Examiner failed to address recited steps related to anonymization and location identification that are said to "improve the field of the invention." Br. 13-15. Appellants add that the claimed invention is similar to the eligible invention in DDR Holdings, LLC v. Hotels.Com, L.P., 773 F.3d 1245 (Fed. Cir. 2014) that addressed a business challenge particular to the Internet. Br. 17-18. According to Appellants, by matching buyers and sellers while maintaining their anonymity and returning relevant and useful results, the claimed invention is said to address a business challenge that arises from computer network implementation. Id. ISSUE Has the Examiner erred in rejecting claim 1 by concluding that it is directed to ineligible subject matter under Â§ 101? This issue turns on whether the claimed invention is directed to a patent-ineligible abstract idea 4 Appeal2017-005788 Application 13/672,508 and, if so, whether the claim's elements----considered individually and as an ordered combination-transform the nature of the claim into a patent- eligible application of that abstract idea. ANALYSIS To determine whether claims are patent eligible underÂ§ 101, we apply the Supreme Court's two-step test articulated in Alice Corp. Pty. Ltd. v. CLS Bank International, 134 S. Ct. 2347 (2014). First, we determine whether the claims are directed to a patent-ineligible concept: laws of nature, natural phenomena, and abstract ideas. Id. at 2354--55. If so, we then proceed to the second step and examine the claim's elements-both individually and as an ordered combination-to determine whether the claim contains an "inventive concept" sufficient to transform the claimed abstract idea into a patent-eligible application. Id. at 2357. Alice Step One Applying Alice step one, we agree with the Examiner that the claimed invention is directed to an abstract idea, namely matching buyers and sellers-a commercial activity. Final Act. 2. Indeed, there is no dispute that the claims are directed to this idea. See Br. 12-13 (noting that Appellants and the Examiner agree that the claims are directed to the idea of matching buyers and sellers of services). Rather, Appellants' arguments pertain principally to the particular way that buyers and sellers are matched as claimed-a particular technique that is said to not preempt the idea of matching buyers and sellers, and ostensibly adds significantly more to that idea. See Br. 11-18. 5 Appeal2017-005788 Application 13/672,508 Notably, Appellants' arguments are more germane to step two of the Alice framework-not step one. Nevertheless, to the extent that Appellants' arguments are intended to also apply to Alice step one, we find such arguments unavailing. Claim 1 recites, in pertinent part, ( 1) receiving an appointment opening from a provider account, and (2) receiving, from a buyer account, an appointment offer and a transferable payment type. The appointment offer is matched to the appointment opening by appointment parameters and offer parameters, and an associated anonymized appointment offer is created and exported to the provider account. An offer acceptance for the anonymized appointment offer is then received from the provider account. The buyer identifier is exported to the provider account, and both the offer acceptance notification and provider identifier is sent to the buyer account. A provided procedure/service, location identifier, and appointment time interval is provided for the offer parameter, and similar information, including a location determinant, is provided for the appointment parameter. The appointment offer is retrieved from the offer database, and the appointment database is searched from the offer parameter matching the appointment parameter. The appointment opening is retrieved from the appointment database if the offer parameter's contained information-including its location identifier-matches that of the appointment parameter, including its location determinant. If there is no such match, a "refine appointment parameter" notification is sent to the buyer account. In essence, the claimed invention matches buyers and sellers via an intermediary that communicates with both parties and, among other things, 6 Appeal2017-005788 Application 13/672,508 anonymizes a buyer's appointment offer and sends this anonymous offer to the seller for acceptance. Despite Appellants' arguments to the contrary (Br. 11-19), we agree with the Examiner that claim 1 is directed to an abstract idea that, in essence, is a fundamental economic and business practice. See Final Act. 2-3; Ans. 3-5. Such fundamental economic and business practices are often held to be abstract. See, e.g., Alice, 134 S. Ct. at 2356 (holding the concept of intermediated settlement is an abstract idea directed to a "fundamental economic practice long prevalent in our system of commerce") ( citation omitted); see also buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1353-54 (Fed. Cir. 2014) (citing cases where contractual relations at issue constituted fundamental economic practices, and noting that forming or manipulating economic relations may involve an abstract idea); Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat. Ass 'n, 776 F.3d 1343, 1347 (Fed. Cir. 2014) (explaining that claims directed to "the mere formation and manipulation of economic relations" and "the performance of certain financial transactions" have been held to involve abstract ideas). Furthermore, it well settled that collecting information is within the realm of abstract ideas----even when the information is limited to particular content. Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016). It is also well settled that analyzing information by steps people go through in their minds, or by mathematical algorithms, without more, are essentially mental processes within the abstract idea category. Id. at 1354. And merely presenting the results of abstract processes of collecting and analyzing information, without more (such as identifying a particular tool for 7 Appeal2017-005788 Application 13/672,508 presentation), is abstract as an ancillary part of such collection and analysis. Id. Similar to the claims at issue in Electric Power, the claimed invention here gathers, manipulates, analyzes, and communicates information of specific content, but does not use any particular inventive technology for performing those functions. That the information pertains to appointments for a provider's services, offers and acceptances of those services, and other associated data is of no consequence here, for collecting and analyzing such information does not make the collection and analysis non-abstract. See SAP America, Inc. v. Investpic, LLC, 890 F.3d 1016, 1021 (Fed. Cir. 2018), modified on reh 'g (Fed. Cir. Aug. 2, 2018); see also LendingTree, LLC v. Zillow, Inc., 656 F. App'x 991, 996 (Fed. Cir. 2016) (unpublished) (noting that applying for loans and receiving offers is "long prevalent in our financial system"). That the claimed invention uses an intermediary to perform various functions-including facilitating anonymous transactions-is of no consequence here, for it is well settled that using computer-based, third- party intermediaries, such as brokers, to facilitate transactions is a fundamental economic practice. See LendingTree, 656 F. App'x at 993-94, 996 (holding ineligible claims using a broker to coordinate loan applications between an Internet user and plural lending institutions because a third-party intermediary or clearinghouse is a "building block of the modem economy"); see also Mortgage Grader, Inc. v. First Choice Loan Services Inc., 811 F.3d 1314, 1318, 1324 (Fed. Cir. 2016) (holding ineligible claims enabling borrowers to shop for loan packages anonymously using a computer); Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1334 (Fed. Cir. 2012) 8 Appeal2017-005788 Application 13/672,508 (noting that using a clearinghouse, without more, is of no consequence in determining eligibility). Appellants' reliance on DDR Holdings, LLC v. Hotels.Com, L.P., 773 F.3d 1245 (Fed. Cir. 2014) on pages 17 and 18 of the Appeal Brief is unavailing. In DDR, instead of a computer network operating in its normal, expected manner by sending a website visitor to a third-party website apparently connected with a clicked advertisement, the claimed invention generated and directed the visitor to a hybrid page that presented ( 1) product information from the third party, and (2) visual "look and feel" elements from the host website. DDR, 773 F.3d at 1258-59. Given this particular Internet-based solution, the court held that the claimed invention did not merely use the Internet to perform a business practice known from the pre- Internet world, but rather was necessarily rooted in computer technology to overcome a problem specifically arising in computer networks. Id. at 1257. That is not the case here. As noted previously, Appellants' claimed invention matches buyers and sellers via an intermediary that communicates with both parties and, among other things, anonymizes a buyer's appointment offer, and sends this anonymous offer to the seller for acceptance. Although computer-based functionality is used to achieve this end, this functionality is nonetheless directed to an abstract idea that, in essence, is a fundamental economic and business practice. Similar to the computer-based anonymous loan shopping system in Mortgage Grader, the claims here are not directed to specific improvements in the way computers and networks carry out their basic functions, but rather merely use computers to match buyers and sellers anonymously-a fundamental economic practice. Although this matching technique may be beneficial, a 9 Appeal2017-005788 Application 13/672,508 claim for a useful or beneficial abstract idea is still an abstract idea. See Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379--80 (Fed. Cir. 2015). We, therefore, agree with the Examiner that the claimed invention is directed to an abstract idea. Alice Step Two Turning to Alice step two, the recited elements----considered individually and as an ordered combination----do not transform the nature of claim 1 into a patent-eligible application of the abstract idea to ensure that the claim amounts to significantly more than that idea. See Alice, 134 S. Ct. at 2357. That the recited method is computer-implemented and recites a specific way to match buyers and sellers, including steps related to (1) anonymization, (2) location identification, and (3) providing an intermediary does not change our conclusion, for these elements do not add significantly more to the abstract idea. First, the claimed invention uses generic computing components to perform the recited abstract idea, namely matching buyers and sellers. Merely reciting generic computing components cannot transform a patent-ineligible abstract idea into a patent- eligible invention. See Alice 134 S. Ct. at 2358-59. Indeed, the recited generic computing components merely do that which can be performed mentally or with a pen and paper----exclusive functions ineligible for patent protection under Â§ 101. See CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372 (Fed. Cir. 2011). We reach this conclusion despite the fact that the various recited steps that match 10 Appeal2017-005788 Application 13/672,508 buyers and sellers involve providing buyer and provider accounts and creating an anonymous appointment offer. Accord Mortgage Grader, 811 F.3d at 1324 (noting that various steps including lenders providing loan pricing information to a third party based on a borrower's credit rating before the borrower's identity is disclosed to a lender could be performed by humans without a computer). To the extent that Appellants contend that the recited functions could not otherwise be performed manually (see Br. 11- 17), there is no persuasive evidence on this record to substantiate such a contention. Nevertheless, even assuming, without deciding, that the recited components add efficiency, any speed increase comes from the capabilities of the generic computer components-not the recited process itself. See FairWarning IP, LLC v. Iatric Systems, Inc., 839 F.3d 1089, 1095 (Fed. Cir. 2016) (citing Bancorp Services, LLC v. Sun Life Assurance Co., 687 F.3d 1266, 1278 (Fed. Cir. 2012) ("[T]he fact that the required calculations could be performed more efficiently via a computer does not materially alter the patent eligibility of the claimed subject matter.")). Like the claims in Fair Warning, the focus of claim 1 is not on an improvement in computer processors as tools, but on certain independently abstract ideas that use generic computing components as tools. See FairWarning, 839 F.3d at 1095 ( citations and quotation marks omitted). In short, merely reciting these generic computing components cannot transform a patent-ineligible abstract idea into a patent-eligible invention. Alice, 134 S. Ct. at 2357. In other words, merely reciting an abstract idea while adding the words "apply it with a computer" does not render an abstract idea non-abstract: there must be more. See Alice, 134 S. Ct. at 2358. 11 Appeal2017-005788 Application 13/672,508 Nor does the claimed invention improve the computer processor device's functionality or efficiency, or otherwise change the way that device functions. Cf Enfzsh LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016). In addition, receiving (1) an appointment opening from the provider account, and (2) an appointment offer and transferable payment type from the buyer account not only use generic computing components to achieve those ends, but are also data gathering steps that constitute insignificant extra-solution activity that is insufficient to render the claim patent-eligible. See In re Bilski, 545 F.3d 943, 963 (Fed. Cir. 2008) (en bane), aff'd on other grounds, 561 U.S. 593 (2010) (characterizing data gathering steps as insignificant extra-solution activity). Nor do the remaining steps add significantly more to the abstract idea, for they merely use generic computer functionality to match buyers and sellers anonymously-functions that could otherwise be performed manually as noted previously. Among other things, ( 1) creating and exporting an anonymized appointment offer to a provider account, (2) receiving an offer acceptance from the provider account, (3) the exporting and respective providing steps for the offer and appointment parameters, and (4) searching the appointment database are generic computer functions that do not add significantly more to the abstract idea. Cf Credit Acceptance Corp. v. Westlake Services, 859 F.3d 1044, 1047, 1054--56 (Fed. Cir. 2017) (holding claims reciting system for generating financing packages based on financial information received from a user terminal via a network for presenting financing terms to the user for immediate purchase were directed to an abstract idea). 12 Appeal2017-005788 Application 13/672,508 We reach a similar conclusion regarding the claimed invention ( 1) matching an appointment offer to an appointment opening, and (2) retrieving an appointment opening from an appointment database if the offer parameter's data matches certain criteria, or otherwise sending a "refine appointment parameter" notification if there is no such match. These steps merely compare data and execute a function based on that comparison-a generic computer function. Cf Classen Immunotherapies, Inc. v. Biogen IDEC, 659 F.3d 1057, 1067 (noting that methods that simply collect and compare data, without applying the data in a step of the overall method, may be ineligible under Â§ 101 ). We reach the same conclusion regarding the recited conditional notification sending step that merely recites generic computer communication functionality. See also buySAFE, 765 F.3d at 1355 ("That a computer receives and sends the information over a network-with no further specification-is not even arguably inventive."); Easy Web Innovations, LLC v. Twitter, Inc., 689 F. App'x 969, 969-71 (Fed. Cir. 2017) (unpublished) (holding claims reciting message publishing system that (1) converted part of a received message to a different format, and (2) published the converted portion were directed to the abstract idea of receiving, authenticating, and publishing data). That a location identifier and determinant are provided in connection with the recited comparison of offer and appointment parameters is of no consequence here, for merely comparing the location associated with a provider's service with location information associated with a prospective buyer of that service is a fundamental economic practice that does not add significantly more to the abstract idea. For example, a consumer seeking contractors to repair or remodel a home would typically limit prospective 13 Appeal2017-005788 Application 13/672,508 contractors to those located in the home's general vicinity-not some distant, far-off land-for practical and logistical reasons. In short, such geographical constraints in providing services to customers are part of everyday commerce. Lastly, we find unavailing Appellants' contention that the claimed invention does not preempt the alleged abstract idea because the claims recite a specific way to match buyers and sellers. See Br. 17. Where, as here, the claims cover a patent-ineligible concept, preemption concerns "are fully addressed and made moot" by an analysis under the Alice framework. See Ariosa, 788 F.3d at 1379. For the foregoing reasons, then, the recited elements----considered both individually and as an ordered combination----do not contain an "inventive concept" sufficient to transform the claimed abstract idea into a patent-eligible application. Therefore, we are not persuaded that the Examiner erred in rejecting claim 1, and claims 2--4 and 6-14 not argued separately with particularity. CONCLUSION The Examiner did not err in rejecting claims 1--4 and 6-14 under Â§ 101. DECISION We affirm the Examiner's decision to reject claims 1--4 and 6-14. 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)(l )(iv). AFFIRMED 14