Ex Parte Bousis et al

Patent Trials and Appeals Board

Apr 11, 2019

14865293 - (D) (P.T.A.B. Apr. 11, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/865,293 09/25/2015 George Bousis
34399 7590 04/15/2019
GARLICK & MARKISON
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.
RAISOOOOl 3173
EXAMINER
100 Congress A venue, Suite 2000 LEVINE, ADAM L
AUSTIN, TX 78701
ART UNIT PAPER NUMBER
3625
NOTIFICATION DATE DELIVERY MODE
04/15/2019 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):
MMurdock@TEXASPATENTS.COM
bpierotti@texaspatents.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GEORGE BOUSIS, STEVE RDZOK, REN WANG,
MILO TODOROVICH, XIPING WANG, and
ANGELA TAORMINA
Appeal 2018-002049
Application 14/865 ,293 1
Technology Center 3600
Before MARC S. HOFF, BETH Z. SHAW, and JASON M. REPKO,
Administrative Patent Judges.
SHAW, Administrative Patent Judge.
DECISION ON APPEAL
1 According to Appellants, the real party in interest is Raise Marketplace Inc.
App. Br. 2.
Appeal2018-002049
Application 14/865,293
STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1-
18. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
The claims are directed to a method and apparatus for an exchange
item marketplace network. Claim 1, reproduced below, is illustrative of the
claimed subject matter:
1. A method for execution by one or more servers of an
exchange item marketplace network, the method comprises:
receiving, from a plurality of seller computing devices, a
plurality of requests to sell exchange items;
for a request to sell of the plurality of requests to sell,
processing the request to sell by:
verifying information regarding a seller computing device
of the plurality of seller computing devices associated with the
request to sell;
when the information regarding the seller computing
device is favorably verified, verifying information regarding an
exchange item identified in the request to sell; and
when the information regarding the exchange item is
favorably verified, adding the exchange item to a digital
exchange item marketplace;
receiving, from a plurality of buyer computing devices, a
plurality of requests to buy exchange items from the digital
exchange item marketplace; and
for a request to buy of the plurality of requests to buy,
processing the request to buy by:
verifying information regarding a buyer computing device
of the plurality of buyer computing devices associated with the
request to buy;
when the information regarding the buyer computing
device is favorably verified, verifying payment information
associated with the buyer computing device regarding
purchasing of a selected exchange item; and
when the payment information is favorably verified:
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processing payment for the selected exchange item;
removing the selected exchange item from the digital
exchange item marketplace; and
adding the selected exchange item to a digital wallet
associated with the buyer computing device.
App. Br. 22.
REJECTIONS
The Examiner made the following rejections:
Claims 10-18 under 35 U.S.C. § 112(a) as lacking enablement.
Claims 1-18 under 35 U.S.C. § 101.
Claims 1-18 under 35 U.S.C. § I02(a)(l) as anticipated by Postrel
(US 2013/0339124 Al, published Dec. 19, 2013).
CONTENTIONS AND ANALYSIS
Section 112
"[T]he PTO bears an initial burden of setting forth a reasonable
explanation as to why it believes that the scope of protection provided by
that claim is not adequately enabled by the description of the invention
provided in the specification of the application." In re Wright, 999 F.2d
1557, 1561---62 (Fed. Cir. 1993) (citing In re Marzocchi, 439 F.2d 220, 223-
24 (CCPA 1971)).
The Examiner rejects claims 10-18 under 35 U.S.C. § 112 "because
the specification does not reasonably provide enablement for a claim
covering every conceivable means for achieving the recited purpose." Final
Act. 14 ( emphasis omitted). The Examiner concludes the claims are drawn
to modules that include potential structural implementation described in the
Specification as a functional block and a state machine.
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A "functional block" and "a state machine" refer to open ended
abstractions and when incorporated in the claims by way of
"means plus function" language they therefore represent an
infinite range of potential implementations. The claimed
modules incorporating those potential implementations are
therefore directed to an infinite range of potential constructs that
perform the functions then recited.
Final Act. 14.
Appellants respond:
In the present application, hardware is thus the major items
and/ or components of a computer. The specification includes
figures 3 and 4 and a corresponding written description of a user
device and a server. Each includes a computing core, which
corresponds to the major components of a computing device or
computer. As such, when a module is implemented as hardware,
it includes the major components of a computing device, such as
those shown in figures 3 and/or 4.
App. Br. 7.
We agree with Appellants. "Title 3 5 requires only that the inventor
enable one of skill in the art to make and use the full scope of the claimed
invention." CFMT, Inc. v. Yieldup Int'! Corp., 349 F.3d 1333, 1338 (Fed.
Cir. 2003). "'Patents are not production documents, and nothing in the
patent law requires that a patentee must disclose data on how to mass-
produce the invented product. . . . [T]he law requires that patents disclose
inventions, not mass-production data .... "' Id. at 1339 ( citing Christianson
v. Colt Indus. Operating Corp., 822 F.2d 1544, 1562 (Fed. Cir. 1987)).
"Furthermore, a patent need not teach, and preferably omits, what is well
known in the art." Hybritech Inc. v. Monoclonal Antibodies, Inc., 802 F.2d
1367, 1384 (Fed. Cir. 1986) (citing Lindemann Maschinenfabrik GMBH v.
Am. Hoist and Derrick Co., 730 F.2d 1452, 1463 (Fed. Cir. 1984)).
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The statements by the Examiner fail to demonstrate that undue
experimentation would have been necessary on the part of one of ordinary
skill in the art to implement the claimed "exchange item marketplace
network." Accordingly, we do not sustain the rejection of claims 10-18
under 35 U.S.C. § 112(a) as lacking enablement.
Section 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 Bankint'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. Kappas, 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 );
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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 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267---68 (1854))); 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, 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., Diehr, 450 U.S. 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 tum 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-
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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 U.S. Patent and Trademark Office ("USPTO") recently published
revised guidance on the application of§ 101. USPTO's 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019)
("Revised Guidance"). Under that Revised 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) (Rev. 08.2017 2018)).
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.
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See Revised Guidance.
Abstract Idea
For the following reasons, we conclude the claims recite a
fundamental economic practice, which is one of certain methods of
organizing human activity identified in the Revised Guidance, and thus an
abstract idea. See Revised Guidance, 84 Fed. Reg. at 52, 53 (listing
"[ c ]ertain methods of organizing human activity-fundamental economic
principles or practices" as one of the "enumerated groupings of abstract
ideas").
Appellants address the claims as a group, and we treat claim 1 as
representative. The claim is directed to an abstract idea because it is directed
to a fundamental economic practice, which is one of certain methods of
organizing human activity, as discussed below. The steps of claim 1,
including, with italics added:
receiving, from a plurality of seller computing devices, a
plurality of requests to sell exchange items;
for a request to sell of the plurality of requests to sell,
processing the request to sell by:
verifying information regarding a seller computing device
of the plurality of seller computing devices associated with the
request to sell;
when the information regarding the seller computing
device is favorably verified, verifying information regarding an
exchange item identified in the request to sell; and
when the information regarding the exchange item is
favorably verified, adding the exchange item to a digital
exchange item marketplace;
receiving, from a plurality of buyer computing devices, a
plurality of requests to buy exchange items from the digital
exchange item marketplace; and
for a request to buy of the plurality of requests to buy,
processing the request to buy by:
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verifying information regarding a buyer computing device
of the plurality of buyer computing devices associated with the
request to buy;
when the information regarding the buyer computing
device is favorably verified, verifying payment information
associated with the buyer computing device regarding
purchasing of a selected exchange item; and
when the payment information is favorably verified:
processing payment for the selected exchange item;
removing the selected exchange item from the digital
exchange item marketplace; and
adding the selected exchange item to a digital wallet
associated with the buyer computing device.
recite steps of receiving a request to sell, receiving requests to buy items,
verifying information regarding a buyer, and processing payment for the
item.
Under Supreme Court precedent, claims directed purely to an abstract
idea are patent ineligible. As set forth in the Revised Guidance, which
extracts and synthesizes key concepts identified by the courts, abstract ideas
include (1) mathematical concepts, (2) certain methods of organizing human
activity, and (3) mental processes. Among those certain methods of
organizing human activity listed in the Revised Guidance are fundamental
economic practices, such as the concept of intermediated settlement in Alice,
and the concept of hedging in Bilski. Like those concepts, claim 1 also
recites a fundamental economic practice. Specifically, the italicized steps
fall under the umbrella of economic practices, including managing
transactions or sales activities, because "receiving" "a plurality of requests to
sell exchange items," "receiving" "a plurality of requests to buy exchange
items," "verifying payment information," and "processing payment" would
ordinarily take place in a sale or market transaction, which occurs in our
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system of commerce. The "processing payment" of a request to buy an
exchange item is an economic act, and the "exchange item" is an item sold
in commerce. See Spec. 7:28-8:9 ("An exchange item is ... a gift card, a
voucher, a store credit .... ").
In Intellectual ventures ILLC v. Capital One Bank, 792 F.3d 1363,
1369 (Fed. Cir. 2015), an advertisement taking into account the time of day
and tailoring the information presented to the user based on that information
was considered another "fundamental ... practice long prevalent in our
system." In Credit Acceptance Corp. v. Westlake Servs., 859 F.3d 1044 (Fed.
Cir. 2017), patent claims directed to a system and method for providing
financing to allow a customer to purchase a product selected from an
inventory of products maintained by a dealer were considered patent
ineligible as directed to the abstract idea of processing an application for
financing a purchase, an economic practice long prevalent in commerce.
Like the claims at issue in Intellectual Ventures I and Credit Acceptance, the
receiving of requests to sell and buy and the processing of payment is "a
fundamental economic practice long prevalent in our system of
commerce." Thus, we conclude claim 1 is directed to a fundamental
economic practice, which is one of certain methods of organizing human
activity identified in the Revised Guidance, and thus an abstract idea.
In accordance with the Revised Guidance, and looking to MPEP
§§ 2106.05(a}-(c) and (e}-(h), we determine that the additional elements of
claim 1, both individually and as an ordered combination, do not integrate a
judicial exception, in this case the abstract idea of a fundamental economic
practice, into a practical application. Claim 1 is directed to little more than
the implementation of the abstract idea on generic computer servers and
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devices. The claim, as a whole, describes how to generally apply or execute
the concept of selling and buying exchange items in a computer
environment. The claimed computer components are recited at a high level
of generality and are merely invoked as tools to perform an existing process.
Simply implementing the abstract idea on generic computer components is
not a practical application of the abstract idea.
Accordingly, the claim, as a whole, does not integrate the abstract idea
into a practical application because the claim limitations do not impose any
meaningful limits on practicing the abstract idea. Stated differently, the
claims do not (1) improve the functioning of a computer or other technology,
(2) are not applied with any particular machine ( except for generic computer
components), (3) do not effect a transformation of a particular article to a
different state, and ( 4) are not applied in any meaningful way beyond
generally linking the use of the judicial exception to a particular
technological environment, such that the claim, as a whole, is more than a
drafting effort designed to monopolize the exception. See MPEP
§§ 2106.0S(a}-(c), (e}-(h).
Inventive Concept
Because we determine that claim 1 is "directed to" an abstract idea,
we next consider whether claim 1 recites an "inventive concept." The
Examiner determined that claim 1 does not recite an inventive concept
because the additional elements in the claim do not amount to "significantly
more" than an abstract idea. See Final Act. 17.
We agree with the Examiner's determination in this regard. The
additional elements recited in claim 1 include "seller computing devices,"
"buyer computing devices," and a "digital wallet." The claim recites these
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elements at a high level of generality, and the written description indicates
that these elements are generic computer components. See, e.g., Spec. 7: 11-
15 ("Each of the user devices 12, 14, and 16 is a computing device .... In
general, a computing device is any electronic device that can communicate
data, process data, and/or store data.); Fig. 2. Using generic computer
components to perform abstract ideas does not provide the necessary
inventive concept. See Alice, 573 U.S. at 223 ("[T]he mere recitation of a
generic computer cannot transform a patent-ineligible abstract idea into a
patent-eligible invention."). Thus, these elements, taken individually or
together, do not amount to "significantly more" than the abstract idea itself.
Appellants contend the Examiner erred in rejecting the claims under
35 U.S.C. § 101 because the claims "would not pre-empt all exchange of
items in a marketplace including verification of buyer and seller devices and
processing of the sale transaction." App. Br. 20. We are not persuaded of
Examiner error by this argument.
Preemption is a driving concern when determining patent eligibility.
See Alice, 573 U.S. at 216-17. Patent law cannot inhibit further discovery
by improperly tying up the future use of the building blocks of human
ingenuity. See id. (citing Mayo, 566 U.S. at 85-86). Although preemption
is characterized as a driving concern for patent eligibility, preemption itself
is not the test for patent eligibility. "Where a patent's claims are deemed
only to disclose patent ineligible subject matter under the Mayo framework,
as they are in this case, preemption concerns are fully addressed and made
moot." Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379
(Fed. Cir. 2015). "While preemption may signal patent ineligible subject
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matter, the absence of complete preemption does not demonstrate patent
eligibility." Id.
Accordingly, we sustain the Examiner's rejection of claims 1-18
under 35 U.S.C. § 101 as directed to patent-ineligible subject matter.
Section 102
The Examiner rejects claims 1-18 under 35 U.S.C. § 102(a)(l) as
anticipated by Postrel. The only arguments Appellants present in the Appeal
Brief with respect to this rejection are as follows:
Nowhere does Postrel teach or suggest that ... the reward
points are posted to a rewards exchange to be bought and sold to
an unknown bidder. In contrast, Postrel teaches they may only be
transferred to a known person (e.g., as a gift to a relative, friend
or acquaintance). Further, Postrel does not teach or suggest
adding the purchased rewards points to a digital wallet of the
buyer, as Postrel does not teach or suggest purchasing rewards
points from an unknown seller.
App. Br. 21 ( emphasis added).
We are not persuaded by these arguments, which are not
commensurate in scope with the claims because the claims do not recite "an
unknown bidder" or "unknown seller." See Ans. 6, 7. Rather, the claims
merely refer to a "buyer" and a "seller." Accordingly, we sustain the
rejection of claims 1-18 under 35 U.S.C. § 102(a)(l) as anticipated by
Postrel.
CONCLUSIONS
The Examiner erred in rejecting claims 10-18 under 35 U.S.C.
§ 112(a).
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The Examiner did not err in rejecting claims 1-18 under 35 U.S.C.
§ 101.
The Examiner did not err in rejecting claims 1-18 under 35 U.S.C.
§ 102 as anticipated by Postrel.
DECISION
For the above reasons, the Examiner's rejection of claims 1-18 is
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) (2009).
AFFIRMED
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