Ex Parte Becker

Patent Trial and Appeal Board

Jun 23, 2017

13526447 (P.T.A.B. Jun. 23, 2017)

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.
13/526,447 06/18/2012 Ian Saul Becker Becker-UP-1926 5980
33873 7590 06/27/2017
Eric Hanscom / InterContinental IP
7040 Avenida Encinas, Suite 104-358
CARLSBAD, CA 92011
EXAMINER
VETTER, DANIEL
ART UNIT PAPER NUMBER
3628
NOTIFICATION DATE DELIVERY MODE
06/27/2017 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):
eric @icipLaw.com
info @ iciplaw .com
ryanp@hanalexmcd.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte IAN SAUL BECKER
Appeal 2015-006746
Application 13/526,447
Technology Center 3600
Before: MURRIEL E. CRAWFORD, JOSEPH A. FISCHETTI, and
MICHAEL W. KIM, Administrative Patent Judges.
FISCHETTI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE1
The Appellant seeks our review under 35 U.S.C. § 134 from the
Examiner’s Final Rejection of claims 1—20. We affirm.
1 The Appellant identifies the inventor as the real party in interest. (Appeal
Br. 3).
Appeal 2015-006746
Application 13/526,447
THE CLAIMED INVENTION
The claimed invention is directed generally to consolidating purchases
of goods and services. (Spec. para. 1). Claim 6 is illustrative of the claimed
subject matter:
6. A computer-implemented method for purchasing a product or
service over the internet comprising
receiving, by one or more computer systems, search
criteria for a product or service from a user;
sending, by one or more computer systems, open requests
to the user, where the user can view the open requests through a
web browser;
joining the user to an open request;
joining additional users to the open request; and
notifying the users upon the occurrence of a limiting event,
where the users are notified of the price per user of the request,
where the users are allowed to accept or reject the open request;
where the open request has a total cost, where the price per
user is the total cost divided by the number of users that have
joined the open request.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Nelson US 6,496,568 B1 Dec. 17, 2002
Eagle US 2009/0198624 A1 Aug. 6, 2009
Walker US 2011/0093301 A1 Apr. 21,2011
Stener US 8,244,549 B1 Aug. 14, 2012
Check Into Safety, Costs and Convenience When Considering Commercial
Airline Alternatives, Arkansas Business 1—2 (Dec. 27, 1999) (hereinafter
“Arkansas Business”).
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REJECTIONS
The following rejections are before us for review.
The Examiner rejected claims 1—20 under 35U.S.C. §101 because the
claimed invention is directed to non-statutory subject matter.
The Examiner rejected claims 1, 2, and 5 under 35 U.S.C. § 103(a) as
unpatentable over Eagle, Walker, and Stener.
The Examiner rejected claims 3 and 4 under 35 U.S.C. § 103(a) as
unpatentable over Eagle, Walker, Stener, and Official Notice.
The Examiner rejected claims 6—11, 13, 14, 16—18, and 202 under 35
U.S.C. § 103(a) as unpatentable over Eagle, Arkansas Business, and Stener.
The Examiner rejected claims 12 and 19 under 35 U.S.C. § 103(a) as
unpatentable over Eagle, Arkansas Business, Stener, and Official Notice.
The Examiner rejected claim 15 under 35 U.S.C. § 103(a) as
unpatentable over Eagle, Arkansas Business, Stener, and Nelson.
FINDINGS OF FACT
We find the following facts by a preponderance of the evidence.
1. The Specification describes that a “request” is “the description of the
service or product the user wants.” (Spec. para. 56).
2. The Specification describes that an “open request” is “a request
accepted by the consolidating engine, and includes an interest list of all
the users who have indicated that they are desirous of purchasing the
product of service.” (Id.).
2 The Examiner lists claim 21 (Final Act. 8 and Answer 2), but no claim 21
is pending.
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3. The Specification describes that “any user can request a product or
service via any type of interactive device; the invention is not limited to
just computers, but can be accessed via mobile devices such as mobile
phones and tablets.” (Id. at para. 78).
4. The Specification describes that “charter aircraft operators may create
an application programming interface (API) that enables the system 2 to
request and receive costs of flight listings for use with passenger
selected flight listings.” {Id. at para. 66).
5. The Specification of the parent application (Application 10/844,175)
generally concerns enabling “passengers to share the cost of said flight
by consolidating their itineraries.” (Parent Spec. para. 1).
6. The Parent Specification describes a “flight schedule” as being “a
desired routing, and other pertinent information.” (Id. at para. 36).
7. The Parent Specification describes it “stores said flight schedule (10)
into inventory, and, renames it: open flight schedule (20).” {Id. at para.
44).
8. The Parent Specification describes
a data base of all open flight schedules (20). Each open flight
schedule shows the number of passengers presently booked for
each open flight schedule; the passenger-capacity of the aircraft;
and, the number of vacant seats still available. The cost per
passenger is also displayed. This cost is calculated by dividing
the total cost of the flight schedule, by the present number of
passengers booked on said flight schedule.
(Id. at para. 48).
9. The Parent Specification describes that “if the passenger accepts the
proposed open flight schedule (25), the system of the present invention,
adds, or books, said passenger on to the said open flight schedule, and,
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displays the new cost per passenger (30) and, the new, increased
passenger load.” {Id. at para. 53).
10. The Parent Specification describes that when a passenger accepts an
open flight schedule, the system “changes the status of said passenger
who accepts (25) to: ‘booked.’” {Id. at para. 54).
11. The Parent Specification describes that once the deadline to withdraw
from the open flight schedule passes, the system provides the flight
operator with a “passenger manifest.” {Id. at para. 63).
12. The Parent Specification describes that “[a]s certain limiting thresholds
(45) (50) (55) are reached, the passengers who are booked on an open
flight schedule (30) have to be notified.” {Id. at para. 57).
13. The Parent Specification describes that the limiting threshold
encompasses “a) full occupancy of the aircraft, b) deadline, or lead time
before actual flight, and, c) any other factors triggered, or events
transpired, which then mandate a decision by the booked passenger.”
{Id. at para. 58).
14. The Bib Data Sheet for the instant application lists May 12, 2004 as the
filing date of Application 10/844,175.
15. Eagle discloses “an Internet-based reservation system that allows
charter jet operators to fill empty legs of charter flights by selling seats
on these legs directly to travelers.” (Eagle para. 9).
16. Eagle discloses charging customers a fee based on prices offered from
among several operators. {Id. at para. 36).
17. Arkansas Business discloses determining a passenger’s cost by dividing
“the cost of a chartered airplane by the number of passengers on board.”
(Arkansas Business 2).
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18. Stener discloses sharing the cost of a charter flight amongst fractional
owners of the aircraft who choose to fly on it on a reserved flight.
(Stener Fig. 8).
19. Stener discloses “[i]f a determination at step 810 is made that there are
more than five owners thinking of flying at a close time, then the
reconfirmation of interests in the times, cities, etc., is made at step 816
by the fractional operator 102.” (Stener col. 22,11. 25—28) (emphasis
omitted).
ANALYSIS
Rejection under 35 U.S.C. § 101
Initially, we note that Appellant argues independent claims 1, 6, and
17 together as a group. (Reply Br. 3). Appellant does not provide a
substantive argument as to the separate eligibility of claims 2—5, 7—16, and
18—20 that depend from claims 1, 6, and 17. Thus, claims 2—5, 7—16, and
18—20 stand or fall with claims 1, 6, and 17. See, 37 C.F.R. §
41.37(c)(l)(iv).
Appellant argues the claims are not directed to “a fundamental
economic principal that is simply being applied using general computers, nor
do these claims merely organize human activity; rather, it is a system that
consolidates requests made by users over the Internet.” (Reply Br. 4; see
also id. at 5—6). We are not persuaded by the Appellant’s arguments.
The patent statute provides that a patent may be obtained for “any new
and useful process, machine, manufacture, or composition of matter, or any
new and useful improvement thereof.” 35 U.S.C. § 101. Yet the Supreme
Court has . . long held that this provision contains an important implicit
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exception: Laws of nature, natural phenomena, and abstract ideas are not
patentable.’” Alice Corp. Pty. Ltd. v. CLSBankInt’l, 134 S. Ct. 2347, 2354
(2014) (quoting Ass 'n for Molecular Pathology v. Myriad Genetics, Inc., 133
S. Ct. 2107, 2116 (2013)). The Court has, thus, made clear that
“[phenomena of nature, though just discovered, mental processes, and
abstract intellectual concepts are not patentable, as they are the basic tools of
scientific and technological work.” Gottschalk v. Benson, 409 U.S. 63, 67
(1972).
The Supreme Court in Alice reiterated the two-step framework, set
forth previously in Mayo Collaborative Services v. Prometheus Labs., Inc.,
566 U.S. 66, 78—79 (2012), “for distinguishing patents that claim laws of
nature, natural phenomena, and abstract ideas from those that claim patent-
eligible applications of those concepts.” Alice, 134 S. Ct. at 2355. The first
step in that analysis is to “determine whether the claims at issue are directed
to one of those patent-ineligible concepts.” Id. If so, the second step is to
consider the elements of the claims “individually and ‘as an ordered
combination’ to determine whether the additional elements ‘transform the
nature of the claim’ into a patent-eligible application.” Id. (quoting Mayo,
566 U.S. 79, 78). In other words, the second step is to “search for an
‘inventive concept’—i.e., 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.’” Id. (citingMayo, 566
U.S. at 72-73).
In rejecting claims 6—20 under 35 U.S.C. § 101, the Examiner finds
that the claimed method steps, as recited in independent claims 6 and 17,
“are directed to the abstract ideas of travel coordinating and cost
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calculation,” which amount to being merely “methods of organizing human
activity and mathematical algorithms.” (Answer 3). The Examiner also
finds the claims “only manipulate abstract data elements” and “do not
present improvements to another technological field.” (Id.). The Examiner
finally finds the use of computers merely involves “storing and transmitting
data.” (Id.).
We agree with the Examiner.
Independent claims 6 and 17 are directed to providing information
about sharing the cost to acquire a product or service by a group of
purchasers, by providing the cost-per-participant as each participant joins or
leaves the group, until no more participants are allowed to join or leave the
group, and recording when a participant joins or leaves the group.
The invention is, thus, a specific version of the well-known practice of
determining who wants to share the cost of a common purchase. Cost
sharing is a long-standing economic practice that predates the use of
computers to determine the cost parameters and keep track of who is in the
group. The claims are, thus, directed to a fundamental economic practice of
arranging to share the cost of a purchase. The claims are also merely a way
to arrange an order of steps to be performed so people can receive
information to decide if they will participate in a shared group purchase,
and, thus, organize the behavior of people interested in sharing a purchase.
The claims also recite methods that could, except for the requirement
that computers be used, be performed entirely through mental thought. The
claims require only sending and receiving information about potential
common purchases (e.g., “who wants to share the cost of a pizza or some
nachos?”), keeping track of who is in a group interested in each potential
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purchase, what the cost per person is, and when the final group membership
and cost per person will be determined. All of these steps can be done by
thought, speaking, or the use of pen and paper to communicate.
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 § 101. CyberSource 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 under § 101”). Additionally, mental processes, e.g.,
sending information to a user, as recited in claim 6, or joining users to a list,
as recited in claim 17, remain unpatentable even when automated to reduce
the burden on the user of what once could have been done with pen and
paper. Id. at 1375 (“That purely mental processes can be unpatentable, even
when performed by a computer, was precisely the holding of the Supreme
Court in Gottschalkv. Benson, [409 U.S. 63 (1972)]”).
Claims 6 and 17 are, thus, directed to abstract ideas.
Turning to the second step of the Alice analysis, because we find that
claims 6 and 17 are directed to abstract ideas, the claims must include an
“inventive concept” in order to be patent-eligible, i.e., there must be an
element or combination of elements that is sufficient to ensure that the claim
in practice amounts to significantly more than the abstract idea itself.
Claim 6 recites that a computer receives requests and respond with
information, where the information could be viewed with a browser. Claim
6 does not provide for additional steps performed by a user, and does not
require that a computer determine the response to the request. Claim 17
additionally recites that a computer adds users to an “open request,” which
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means adding a user to a list of users. (FF 1, 2). There is nothing recited in
the claims, or described in the Specification, that requires special
programming to a generic computer to permit communicating information
between a user and a computer, nor keeping a list, as the recited steps
performed by a computer are basic computer functions capable of being
performed by general purpose computers.3 In addition, other forms of
communication, such as by telephone, are described as being within the
scope of the invention. (FF 3).
“[AJfter Alice, there can remain no doubt: recitation of generic
computer limitations does not make an otherwise ineligible claim patent-
eligible. . . . The bare fact that a computer exists in the physical rather than
purely conceptual realm is beside the point.” DDR Holdings, LLC v.
Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014) (internal citations
and quotation marks omitted).
Nothing in claims 6—20 purports to improve computer functioning or
“effect an improvement in any other technology or technical field.” Alice,
134 S. Ct. at 2359. Nor do claims solve a problem unique to the Internet,
because having an interest in sharing the cost of a common purchase does
not require that the Internet be involved. See DDR Holdings, 773 F.3d at
1257. The claims also are not adequately tied to “a particular machine or
apparatus,” because no special programming is required for the steps
3 Dependent claim 12 recites “accessing an application programming
interface.” Dependent claim 18 recites “sending an electronic mail
message.” These two dependent claims are the only ones reciting any steps
performed by a computer, and, in any case, these are basic input/output
functions performed by a general-purpose computer. {See, for example, FF
4).
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required to be performed by a computer. Bilski v. Kappos, 561 U.S. 593,
601 (2010).
Because claims 6—20 are directed to an abstract idea, and nothing in
the claims adds an inventive concept, the claims are not patent-eligible under
§101. Therefore, we affirm the Examiner's rejection of claims 6—20 under
35U.S.C. § 101.
We find no meaningful distinction between independent method claim
6 and independent system claim 1. The claims all are directed to the same
underlying invention. Claim 1 additionally only requires a computer to store
data, calculate a price, and remove a user from an open request (i.e.,
deletion), but these appear to be basic computer functions not requiring
special programming. Therefore, we affirm the Examiner’s rejection of
independent claim 1 under § 101. As the Federal Circuit has made clear “the
basic character of a process claim drawn to an abstract idea is not changed
by claiming only its performance by computers, or by claiming the process
embodied in program instructions on a computer readable medium.” See
CyberSource, 654 F.3d at 1375—76 (citing In reAbele, 684 F.2d 902 (CCPA
1982)).
Because we find that dependent claims 2—5 lack additional elements
that would render the claims patent-eligible, we also affirm the Examiner’s
rejection under § 101 of these dependent claims on the same basis as the
independent claim from which they depend.
Rejections of Claims 1—5 under 35 U.S.C. § 103(a)
Appellant argues that Walker is not prior art. (Appeal Br. 12—13).
We agree.
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The Examiner finds that “the parent application does not provide
support for adding users to an interest list. Accordingly, claims 1 -5 are not
entitled to the benefit of the prior application.” (Non-Final Act. 2 (mailed
Sept. 4, 2013) (emphasis omitted)). The Examiner further finds the “parent
application does not describe any listing of passengers whatsoever, and
specifically does not describe an ‘interest list’ to which users are added and
can be removed (see 10037 cited as support, which merely discloses ‘the
number of passengers’ rather than a list”) (Answer 4).
As a result, the Examiner relies on Walker, filed October 15, 2009, as
one of the references over which the Examiner finds claims 1—5 obvious.
(Final Act. 5—7).
The parent application describes an “open flight schedule” that is, a
list of passengers, along with additional information, interested in sharing a
flight itinerary. (FF 5—8). The parent application also describes that if a
passenger “accepts the proposed open flight schedule (25), the system of the
present invention, adds, or books, said passenger on to the said open flight
schedule.” (FF 9). The “open flight schedule,” therefore, functions as an
“interest list” to which users interested in the flight are added.
The Examiner asserts that the open flight schedule essentially contains
only numbers of passengers, but not the identity of the passengers as on a list
of names. (Answer 4). However, the parent application keeps track of the
status of each passenger individually (FF 10) and ultimately provides a list
of passenger names in a “passenger manifest” (FF 11), both of which
indicate the “open flight schedule” contains a list of names. This “open
flight schedule” then, is essentially identical to the currently claimed step “to
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join one or more users to an open request whereby the one or more users are
added to an interest list,” in claim 1.
The Examiner also asserts that the parent “also fails to disclose
recalculating the price per user and notifying users of the interest list of the
request.” (Answer 4).
We disagree with the Examiner, because the parent application
discloses the open flight request contains the “cost per passenger,” which “is
calculated by dividing the total cost of the flight schedule, by the present
number of passengers booked on said flight schedule.” (FF 8). Each time a
user is added or removed, in order to store and display the correct cost, the
cost would need to be recalculated, based on the “passengers booked.” (Id.).
We also disagree with the Examiner, because the specific claim
language is not to notify users of a request, but to “notify users on the
interest list of an open request upon an occurrence of a limiting event.” The
parent application notifies users when a “limiting threshold” is reached (FF
12), such as a deadline (FF 13). We interpret a deadline upon which users
are notified as a “limiting event” as claimed.
The Parent Application 10/844,175, therefore, provides adequate
support for the “interest list” claim language in the instant application.
Because claims 1—5 are, therefore, entitled to the benefit of the Parent
Application’s filing date of May 12, 2004 (FF 14), Walker, with a filing date
in 2009, is not prior art.
As a result, we do not sustain the rejection of claims 1,2, and 5 under
35 U.S.C. § 103(a) over Eagle, Walker, and Stener. We also do not sustain
the rejection of claims 3 and 4 under 35 U.S.C. § 103(a) over Eagle, Walker,
Stener, and Official Notice, because they depend from claim 1.
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Rejection of Claims 6—11, 13, 14, 16—18, and 20
under 35 U.S.C. § 103(a)
Initially, we note that Appellant argues independent claims 6 and 17
together as a group. (Appeal Br. 13). Correspondingly, we select
representative claim 6 to decide the appeal of these claims, with remaining
claim 17 standing or falling with claim 6. Appellant does not provide a
substantive argument as to the separate patentability of claims 7—11, 13, 14,
16, 18, and 20 that depend from claims 6 and 17. Thus, claims 7—11, 13, 14,
16—18, and 20 stand or fall with claim 6. See, 37 C.F.R. § 41.37(c)(l)(iv).
Appellant argues that because Arkansas Business discloses a cost per
passenger based on “passengers on board,” the price would not fluctuate as
potential passengers join or are removed from the interest list, but would
only be set “upon takeoff.” Appeal Br. 13—14.
We are not persuaded by Appellant’s argument. Eagle discloses a
charter airplane reservation system to sell open seats on a charter flight.
(FF 15). Eagle reports the price of each seat as reported by each flight
operator upon an inquiry. (FF 16). The Examiner finds this is not
necessarily the cost of the flight divided by the number of passengers, or
interested passengers, but finds “cost per user by dividing the cost of the
chartered airplane by the number of users on board” in Arkansas Business.
(Final Act. 9).
Although Arkansas Business uses the term “on board” (FF 17), the
ordinary artisan would not restrict its meaning to only those passengers
physically on board the aircraft at the time of take-off. Instead, the ordinary
artisan would more broadly interpret this phrase as the cost of the flight if
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the flight were divided by that number of passengers who may choose to fly.
See KSR Int'l. Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (In making the
obviousness determination one “can take account of the inferences and
creative steps that a person of ordinary skill in the art would employ”). In
addition, “[a] person of ordinary skill is also a person of ordinary creativity,
not an automaton.” Id. at 421.
Appellant also argues that “neither Arkansas Business nor Eagle, III
account for or provide for a cost per user that changes before the closing of
the open request.” (Appeal Br. 14). We are not persuaded by the argument,
because Stener, which is directed to sharing charter airplane flying costs (FF
18), discloses that if there are “more than five owners thinking of flying at a
close time, then the reconfirmation of interests in the times, cities, etc., is
made.” (FF 19). The ordinary artisan would understand that cost would
vary until the number of passengers sharing the costs is fixed, and that
communicating those varying costs would be a relevant item of information
upon which to require “reconfirmation,” thus, meeting the claim language.
Rejections of Claims 12, 15, and 19 under 35 U.S.C. § 103(a)
We affirm the rejections of claims 12, 15, and 19, which are not
argued separately. (Appeal Br. 13).
CONCFUSIONS OF FAW
The Examiner did not err in rejecting claims 1—20 under 35 U.S.C.
§101.
The Examiner erred in rejecting claims 1—5 under 35 U.S.C. § 103(a).
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The Examiner did not err in rejecting claims 6—20 under 35 U.S.C. §
103(a).
DECISION
The Examiner’s rejection of claims 1—20 under 35 U.S.C. § 101 is
AFFIRMED.
The Examiner’s rejections of claims 1—5 under 35 U.S.C. § 103(a) are
REVERSED.
The Examiner’s rejections of claims 6—20 under 35 U.S.C. § 103(a)
are AFFIRMED.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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