Ex Parte Bousis et alDownload PDFPatent Trials and Appeals BoardApr 11, 201914865293 - (D) (P.T.A.B. Apr. 11, 2019) Copy Citation 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: 2 Appeal2018-002049 Application 14/865,293 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. 3 Appeal2018-002049 Application 14/865,293 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)). 4 Appeal2018-002049 Application 14/865,293 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 ); 5 Appeal2018-002049 Application 14/865,293 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- 6 Appeal2018-002049 Application 14/865,293 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. 7 Appeal2018-002049 Application 14/865,293 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: 8 Appeal2018-002049 Application 14/865,293 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 9 Appeal2018-002049 Application 14/865,293 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 10 Appeal2018-002049 Application 14/865,293 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 11 Appeal2018-002049 Application 14/865,293 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 12 Appeal2018-002049 Application 14/865,293 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). 13 Appeal2018-002049 Application 14/865,293 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 14 Copy with citationCopy as parenthetical citation