Ex Parte Breaux et al

Patent Trial and Appeal Board

Oct 25, 2017

13861494 (P.T.A.B. Oct. 25, 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.
13/861,494 04/12/2013 Douglas N. Breaux END920020042US2 4276
45092 7590 10/27/2017
HOFFMAN WARNTOK T T C EXAMINER
540 Broadway
4th Floor
ADE, OGER GARCIA
ALBANY, NY 12207 ART UNIT PAPER NUMBER
3687
NOTIFICATION DATE DELIVERY MODE
10/27/2017 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):
PTOCommunications@hoffmanwarnick.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DOUGLAS N. BREAUX, MICHAEL F. CIPRIANI,
RICHARD C. JAWORSKI, STEVEN L. MARTIN, and
MICHAEL L. WILLIAMS
Appeal 2016-0050871
Application 13/861,4942
Technology Center 3600
Before NINA L. MEDLOCK, BRADLEY B. BAYAT, and
MATTHEW S. MEYERS, Administrative Patent Judges.
BAYAT, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1—11 and 13—18 under 35 U.S.C. § 101 as directed to
non-statutory subject matter. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Our decision references Appellants’ Appeal Brief (“App. Br.,” filed
Aug. 20, 2015) and Reply Brief (“Reply Br.,” filed Apr. 18, 2016), and the
Examiner’s Answer (“Ans.,” mailed Mar. 11, 2016) and Final Office Action
(“Final Act.,” mailed May 5, 2015).
2 Appellants identify “International Business Machines Corporation” as the
real party in interest. App. Br. 1.
Appeal 2016-005087
Application 13/861,494
STATEMENT OF THE CASE
Claimed Subject Matter
Appellants’ claimed “invention relates to electronic order processing.”
Spec. 12. Claims 1, 7, and 14 are the independent claims on appeal.
Claim 7, reproduced below, is illustrative of the claimed subject matter.
7. A computer-implemented method of processing an order,
comprising:
a computer processor receiving an order request at an
input system;
the computer processor selecting one of a plurality of
request handlers in a request system based on a type of the
order request;
the computer processor processing the order request
using the selected request handler; and
the computer processor generating an order receipt based
on the processed order request at a receipt system, wherein the
generating the order receipt includes:
the computer processor selecting one of a plurality
of receipt format handlers based on a format of the order
request, wherein each receipt format handler generates an
order receipt having a format that is unique from each of
the other output handlers; and the computer processor
generating the order receipt using the selected receipt
format handler.
App. Br. 10-11, Claims Appendix.
ANALYSIS
The Supreme Court, in Alice Corp. Pty. Ltd. v. CIS Banklnt’l, 134 S.
Ct. 2347, 2355 (2014), reiterated the two-step framework previously set
forth in Mayo3 “for distinguishing patents that claim laws of nature, natural
3 Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S.
66, 82 (2012).
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Application 13/861,494
phenomena, and abstract ideas from those that claim patent-eligible
applications of those concepts.” The first step in that analysis is to
“determine whether the claims at issue are directed to one of those patent-
ineligible concepts.” Alice Corp., 134 S. Ct. at 2355. If the claims are not
directed to a patent-ineligible concept, e.g., an abstract idea, the inquiry
ends. Otherwise, the inquiry proceeds to the second step where the elements
of the claims are considered “individually and ‘as an ordered combination”’
to determine whether there are additional elements that “‘transform the
nature of the claim’ into a patent-eligible application.” Id. (quoting Mayo,
566 U.S. at 78-79).
Applying the framework in Alice, and as the first step of that analysis,
the Examiner maintains that independent claims 1, 7, and 14 are “directed to
the fundamental economic practice of ‘order processing system that
generates an order receipt based on an order request’, which is considered an
abstract idea.” Ans. 2. Proceeding to the second step in the analysis, the
Examiner determines that:
The claim(s) does/do not include additional elements that are
sufficient to amount to significantly more than the judicial
exception because the generically-recited computer elements
(e.g. a computing device having a processor, an input system
having an input interface and a plurality of input handlers,
wherein the input system selects, automatically by the processor
.... ; a request system in communication with the input system,
wherein the request system has a plurality of request handlers,
and wherein the request system selects, automatically by the
processor .... ; a receipt system in communication with the
request system, wherein the receipt system has a plurality of
output handlers for generating a receipt for the order request and
for transmitting the receipt to the user, wherein the receipt system
selects, automatically by the processor .... ; and etc.) do not add
a meaningful limitation to the abstract idea because the actions,
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Application 13/861,494
functions, and/or steps performed by the generically-recited
computer elements would be routine and conventional in any
computer implementations.
Id. at 2—3.
As an initial matter, we note that Appellants argue independent
claims 1, 7, and 14 as a group. App. Br. 7. We select independent claim 7
as representative. Thus, claims 1 and 14 stand or fall with claim 7. See
37 C.F.R. § 41.37(c)(l)(iv). Addressing these arguments, in turn, we do not
find any to be persuasive of error in the rejection thereof.
Turning to the first step of Alice, Appellants argue that the Examiner
erred in rejecting the independent claims under 35 U.S.C. § 101 because “it
is an error to deem the claimed invention an abstract idea as it does not seek
a monopolization of the concept of order processing as urged by the Office.
Accordingly, Appellants] submit[] that the claimed invention is not directed
to an abstract idea.” App. Br. 6. But preemption is not a separate test under
§ 101.4 There is no dispute that the Supreme Court has described “the
concern that drives this exclusionary principle [i.e., the exclusion of abstract
4 To be clear, the proper focus is not preemption per se, for some
measure of preemption is intrinsic in the statutory right granted with
every patent to exclude competitors, for a limited time, from
practicing the claimed invention. See 35 U.S.C. § 154. Rather, the
animating concern is that claims should not be coextensive with a
natural law, natural phenomenon, or abstract idea; a patent-eligible
claim must include one or more substantive limitations that, in the
words of the Supreme Court, add “significantly more” to the basic
principle, with the result that the claim covers significantly less. See
Mayo, 566 U.S. at 72—73. Thus, broad claims do not necessarily raise
§101 preemption concerns, and seemingly narrower claims are not
necessarily exempt. CLSBanklnt’l. v. Alice Corp. Pty. Ltd., Ill F.3d
1269, 1281 (Fed. Cir. 2013) (Lourie, J., concurring).
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Application 13/861,494
ideas from patent eligible subject matter] as one of pre-emption.” Alice
Corp., 134 S. Ct. at 2354. But characterizing pre-emption as a driving
concern for patent eligibility is not the same as characterizing pre-emption as
the sole test for patent eligibility. “The Supreme Court has made clear that
the principle of preemption is the basis for the judicial exceptions to
patentability” and “[f]or this reason, questions on preemption are inherent in
and resolved by the § 101 analysis.” Ariosa Diagnostics, Inc. v. Sequenom,
Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015) (citing Alice Corp., 134 S. Ct.
at 2354). Yet, although “preemption may signal patent ineligible subject
matter, the absence of complete preemption does not demonstrate patent
eligibility.” Id.; see also OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d
1359, 1362-63 (Fed. Cir. 2015), cert, denied, 136 S. Ct. 701 (2015)(“[T]hat
the claims do not preempt all price optimization or may be limited to price
optimization in the e-commerce setting do not make them any less
abstract.”). Thus, Appellants’ argument fails to apprise us of error as to the
Examiner’s determination under step one of Alice.
Turning to the second step of Alice, Appellants argue that the claimed
invention recites an element or combination of elements that sufficiently
ensure that the claims amount to significantly more than the abstract idea
because “the current claims are allowable over the previously cited prior art
due to the inventiveness of the invention.” App. Br. 6. But to the extent that
Appellants maintain that the elements of the claims necessarily amount to
“significantly more” than the abstract idea because the claimed process is
allegedly patentable over the prior art, Appellants misapprehend the
controlling precedent. Although the second step in the Alice framework is
termed a search for an “inventive concept,” the analysis is not an evaluation
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Application 13/861,494
of novelty or non-obviousness, but rather, a search for “an element or
combination of elements that is ‘sufficient to ensure that the patent in
practice amounts to significantly more than a patent upon the [ineligible
concept] itself.’” Alice Corp., 134 S. Ct. at 2355. A novel and nonobvious
claim directed to a purely abstract idea is, nonetheless, patent-ineligible. See
Mayo, 566 U.S. at 90. Thus, an abstract idea does not transform into an
inventive concept just because the Examiner has not found prior art that
discloses or suggests it. Indeed, “[t]he ‘novelty’ of any element or steps in a
process, or even of the process itself, is of no relevance in determining
whether the subject matter of a claim falls within the § 101 categories of
possibly patentable subject matter.” Diamond v. Diehr, 450 U.S. 175, 188—
189 (1981).
Appellants next assert “that improving upon the technology or
technical field of processing orders as recited in claims 1, 7, and 14 ensure
that the claimed invention amounts to significantly more than the purported
abstract idea of performing order processing.” App. Br. 7. But Appellants
do not provide any further explanation or technical reasoning in support of
their assertion.
And finally, we are unpersuaded by Appellants’ contention that:
In the instant case, as stated in the background, the creation of
internet “shopping carts” has created a need for the solution
offered by features of the invention. Accordingly, the solution
offered in embodiments of the invention are [sic] not to be
considered abstract ideas, as the need was created by the
technology, and the problem and solution are both tied to
computer implemented methods.
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Application 13/861,494
Id. Similarly here, Appellants present no persuasive argument or
explanation to support their position. Nor, for that matter, do Appellants
even identify the problem that the claimed invention allegedly solves.
We also note that Appellants’ Reply Brief merely duplicates
arguments discussed above from the principal brief.
Accordingly, we are not persuaded for the reasons set forth above that
the Examiner erred in rejecting independent claim 7 under 35 U.S.C. § 101.
Therefore, we sustain the Examiner’s rejection of claim 7, including
independent claims 1 and 14, which fall with claim 7. We also sustain the
Examiner’s rejection of dependent claims 2—6, 8—11, 13, and 15—18, which
are not argued separately.
DECISION
The Examiner’s rejection of claims 1—11 and 13—18 under 35 U.S.C.
§ 101 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).
AFFIRMED
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