Ex Parte Canis et al

Patent Trial and Appeal Board

Jan 31, 2018

14187755 (P.T.A.B. Jan. 31, 2018)

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.
14/187,755 02/24/2014 Laure Canis PT1016US00 5408
132326 7590
Thompson Hine LLP
10050 Innovation Drive
Suite 400
Dayton, OH 45342-4934
EXAMINER
ZARE, SCOTT A
ART UNIT PAPER NUMBER
3687
NOTIFICATION DATE DELIVERY MODE
02/02/2018 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):
ipdocket @ thompsonhine. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LAURE CANIS, ALEXANDRE CHABOD, LAURENT GIORGI,
BOHREN BEN MANSOUR, and CHRISTOPHE ANGELINI
Appeal 2016-006937
Application 14/187,7551
Technology Center 3600
Before ST. JOHN COURTENAY III, JOHN P. PINKERTON, and
NORMAN H. BEAMER, Administrative Patent Judges.
COURTENAY, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1—21, which are all the claims pending in this application. We have
jurisdiction over the pending claims under 35 U.S.C. § 6(b).
We affirm.
1 Appellants identify the real party in interest as Amadeus S.A.S., Biot,
France. (App. Br. 3).
Appeal 2016-006937
Application 14/187,755
STATEMENT OF THE CASE
Introduction
Appellants’ invention “generally relates to computers and computer
software, and in particular to methods, systems, and computer program
products for auditing transactions related to the sale of a travel product.”
(Spec. 1).
Exemplary Claim
1. A method of auditing a sale of a ticket by a first business
entity for a travel product provided by a second business entity,
the method comprising:
receiving, at a processor, a reservation request for the
ticket from the first business entity;
in response to receiving the reservation request,
determining, by a fare engine used to price the ticket prior to
the sale of the ticket, a first price for the ticket based on a first
pricing context comprising a plurality of first pricing context
parameters that define conditions under which the ticket is
being priced;
storing, in a pricing context database, first data defining
the first pricing context;
receiving, at the processor after the sale of the ticket,
second data defining a plurality of ticket parameters including a
ticket price parameter that defines a second price charged for
the ticket by the first business entity;
querying, by the processor after the sale of the ticket, the
pricing context database for the first data;
determining, by the processor, an audit price for the
ticket based on the first data retrieved from the pricing context
database; and
comparing, by the processor, the second price to the audit
price.
2
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Application 14/187,755
Rejection 2
Claims 1—21 are rejected under 35 U.S.C. § 101 as being directed to
patent-ineligible subject matter.
Issue on Appeal
Did the Examiner err in rejecting claims 1—21 under 35 U.S.C. § 101
as being directed to patent-ineligible subject matter?
We have considered all of Appellants’ arguments and any evidence
presented. To the extent Appellants have not advanced separate, substantive
arguments for particular claims, or other issues, such arguments are waived.
See 37 C.F.R. § 41.37(c)(l)(iv). We highlight and address specific findings
and arguments for emphasis in our analysis below.
Rejection of Claims 1—21 under 35 U.S.C. § 101
Under 35 U.S.C. § 101, a patent may be obtained for “any new and
useful process, machine, manufacture, or composition of matter, or any new
and useful improvement thereof.” The Supreme Court has “long held that
this provision contains an important implicit exception: Laws of nature,
natural phenomena, and abstract ideas are not patentable.” Alice Corp. v.
CLS BankInt’l, 134 S. Ct. 2347, 2354 (2014) (quoting Ass’n for Molecular
Pathology v. Myriad Genetics, Inc., 133 S. Ct. 2107, 2116 (2013)). The
Supreme Court in Alice reiterated the two-step framework previously set
forth in Mayo Collaborative Services v. Prometheus Laboratories, Inc.,
132 S. Ct. 1289, 1300 (2012), “for distinguishing patents that claim laws of
2 The Examiner withdrew the rejections under § 102 (Final Act. 8) and § 112
(Advisory Act. mailed Oct. 16, 2015, p. 2).
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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, such as an
abstract idea. Abstract ideas may include, but are not limited to,
fundamental economic practices, methods of organizing human
activities, an idea of itself, and mathematical formulas or relationships.
Id. at 2355—57.
If the claims are not directed to a patent-ineligible concept, the
inquiry ends. See Visual Memory LLC v. NVIDIA Corp., 867 F.3d 1253,
1262 (Fed. Cir. 2017).
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 the additional elements ‘transform the
nature of the claim’ into a patent-eligible application.” Alice, 134 S. Ct. at
2355 (quoting Mayo, 132 S. Ct. at 1298, 1297). We consider the question of
whether the claims are directed to a specific improvement in the
capabilities of the computing devices, or, instead, “a process that qualifies as
an ‘abstract idea’ for which computers are invoked merely as a tool.”
Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016). Thus,
our inquiry is summarized in TABLE 1:
Step one: Abstract Idea?
(or Law of Nature or
Natural Phenomena?)
Step Two: Inventive
Concept?
Patent Eligible?
NO Not applicable (NA) YES
YES YES YES
YES NO NO
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We, therefore, decide under step two whether the claims: (a) set forth
an inventive concept that provides a specific means or method that
improves the relevant technology, or (b) are directed to a result or effect that
itself is the abstract idea, in which the claims merely invoke generic
processes and machinery. See Enfish, 822 F.3d at 1336. (See TABLE 1
above, last two rows).
The Examiner’s Rejection of Representative Claim 1 3
Regarding the first prong of the Mayo/Alice analysis, the Examiner
notes that “claims 1—12 and 21 are directed to a process and claims 13—20
are directed to a machine.” (Final Act. 6). The Examiner nevertheless
concludes that all the claims are “primarily directed to auditing ticket
prices among business entities based on parameters, which is considered
to be an abstract idea because it is amounts to nothing more than a
fundamental business practice.” {Id., emphasis added).
Regarding the second prong of the Mayo/Alice analysis, the Examiner
concludes:
when considering the elements and combinations of elements,
the claims as a whole, do not amount to significantly more
than the abstract idea itself. This is because the claims
merely amount to applying the abstract idea on a computer.
The analysis above applies to all statutory categories of
invention. Accordingly, claims 1—21 are all rejected as
ineligible for patenting under 35 U.S.C. § 101 based upon this
same rationale.
3 We give the contested claim limitations the broadest reasonable
interpretation (BRI) consistent with the Specification. See In re Morris,
127 F.3d 1048, 1054 (Fed. Cir. 1997).
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(Final Act. 6) (emphasis added).
In the Answer (4), the Examiner further concludes the claimed steps
or acts “could all be performed by humans in the human mind, or with pen
and paper, and without the use of a computer.” The Examiner finds: “the
claims do not purport to improve the computer itself, or improve another
technological field, nor has Appellant made an argument that they do.
Rather, the proposed solution is not rooted in computer technology, but is
rooted in auditing practices which are incidentally performed on a
computer.” (Ans. 8) (emphasis added). Thus, the Examiner concludes all
claims on appeal are not patent eligible. (Id.).
Mayo/Alice Analysis — Step 1
Regarding A lice Step 1, Appellants contend, inter alia:
The Examiner has failed to provide any evidentiary support
for the conclusion that the claims are directed to the abstract
idea of "auditing ticket prices among business entities based on
parameters", or that the alleged abstract idea itself is
fundamental. As a substitute, it is apparent to the Appellants
that the Examiner is either improperly taking official notice of
facts not in the record or improperly relying on common
knowledge in reaching the conclusion that the claims are
directed to an abstract idea.
(App. Br. 10, emphasis added).
The Examiner disagrees:
In response, the Examiner first notes that the courts consider the
determination of whether a claim is eligible to be a question of
law. July 2015 Update: Subject Matter Eligibility, hereinafter
"July 2015 Update" (published July 30, 2015), p. 6.
Accordingly, an Examiner does not need to rely on evidence
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that a claimed concept is a judicial exception, and may
"resolve the ultimate conclusion on eligibility without making
any factual findings." Id. Thus, contrary to the Appellant's
position, the Examiner's burden under the first step of the Alice
test should be met by clearly articulating the reason why the
claimed invention is not eligible, for example, by providing a
reasoned rationale that identifies the judicial exception recited
in the claim and why it is considered an exception. Id.
(Ans. 3).
The Supreme Court guides the category of abstract ideas embraces
“fundamental economic practice[s] long prevalent in our system of
commerce.” Alice, 134 S. Ct. at 2356. Further, “simply appending
conventional steps, specified at a high level of generality, to laws of nature,
natural phenomena, and abstract ideas cannot make those laws, phenomena,
and ideas patentable.” Mayo, 132 S. Ct. at 1300. Our reviewing court also
guides that fundamental economic and conventional business practices
are often found to be abstract ideas, even if performed on a computer.
See, e.g., OIP Techs. Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362—63
(Fed. Cir. 2015).
Applying this guidance here, we agree with the Examiner that the
claims before us on appeal are directed to a fundamental economic
practice (i.e., determining a price for a ticket), and that “[pjatent
eligibility under § 101 presents an issue of law.” Accenture Glob. Servs.,
GmbHv. Guidewire Software, Inc., 728 F.3d 1336, 1340 (Fed. Cir. 2013).
See also para. IV, “JUFY 2015 UPDATE: SUBJECT MATTER
EFIGIBIFITY” to 2014 INTERIM GUIDANCE ON PATENT SUBJECT
MATTER ELIGIBILITY (2014 IEG), 79 Fed. Reg. 74618 (Dec. 16, 2014):
The courts consider the determination of whether a claim is
eligible (which involves identifying whether an exception such
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as an abstract idea is being claimed) to be a question of law.
Accordingly, courts do not rely on evidence that a claimed
concept is a judicial exception, and in most cases resolve the
ultimate legal conclusion on eligibility without making any
factual findings.
(Emphasis added, footnote omitted).
Therefore, we find unavailing Appellants’ contention that the
Examiner has taken “official notice of facts not in the record or [is]
improperly relying on common knowledge in reaching the conclusion that
the claims are directed to an abstract idea.” (App. Br. 10). Because patent
eligibility under § 101 presents a question of law, we find the Examiner has
met the burden of establishing that the claims are directed to an abstract idea
in a manner that satisfies the notice requirement of 35 U.S.C. § 132(a).4
Moreover, but for the recitation of a generic “processor” (independent
claims 1,13, and 20), we agree with the Examiner (Ans. 4) that the recited
steps (e.g., “A method of auditing a sale of a ticket” — claim 1) could be
performed as mental steps, or with the aid of pen and paper. See
CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1375 (Fed. Cir.
2011) (“That purely mental processes can be unpatentable, even when
performed by a computer, was precisely the holding of the Supreme Court in
4 The Federal Circuit guides “the prima facie case is merely a procedural
device that enables an appropriate shift of the burden of production.” Hyatt
v. Dudas, 492 F.3d 1365, 1369 (Fed. Cir. 2007). This burden is met by
“adequately explaining] the shortcomings it perceives so that the applicant
is properly notified and able to respond.” Id. at 1370. It is only “when a
rejection is so uninformative that it prevents the applicant from recognizing
and seeking to counter the grounds for rejection” that the prima facie burden
has not been met and the rejection violates the minimal requirements of 35
U.S.C. § 132(a). Chester v. Miller, 906 F.2d 1574, 1578 (Fed. Cir. 1990).
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Gottschalk v. Benson’’ ). Our reviewing court guides “[t]he abstract idea
exception prevents patenting a result where ‘it matters not by what process
or machinery the result is accomplished.’” McRO, Inc. v. Bandai Namco
Games America Inc., 837 F.3d 1299, 1312 (Fed. Cir. 2016) (quoting O'Reilly
v. Morse, 56 U.S. 62, 113 (1854)). See also Alice, 134 S. Ct. at 2358
(holding that “the mere recitation of a generic computer cannot transform a
patent-ineligible abstract idea into a patent-eligible invention”).
Therefore, regarding the first prong of the Mayo/Alice test, we are not
persuaded by Appellants’ arguments. Thus, under a broad but reasonable
interpretation5 of exemplary claim 1, the aforementioned case law guides
our legal conclusion that Appellants’ “method of auditing a sale of a
ticket” is directed to a fundamental economic practice, which is a patent-
ineligible abstract idea. (Claim 1; See Final Act. 6; Ans. 3—5 (emphasis
added)).
Mayo/Alice Analysis — Step 2
Because we conclude all claims on appeal are directed to an
abstract idea, we turn to the second part of the Mayo/Alice analysis. We
further analyze the claims to determine if there are additional limitations
that individually, or as an ordered combination, ensure the claims amount to
“significantly more” than the abstract idea. Alice, 134 S. Ct. at 2357.
(emphasis added).
5 See n.3, supra.
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Regarding Alice Step 2, Appellants urge, inter alia:
The claims recite “significantly more” than the alleged
abstract concept of "auditing ticket prices among business
entities based on parameters" itself because they recite an
inventive concept, namely the creation and use of the context
database in auditing ticket sales. The context database thereby
provides a new and useful way of auditing sales of tickets that
does not rely on ticket data, which may be inaccurate, to
determine the audit price. See Application, paragraph [0034]
(disclosing how the ticketing process can introduce errors into
the ticketing data).
(App. Br. 12, emphasis added).
In the Reply Brief (3) Appellants further contend:
Similarly to the invention at issue in DDR Holdings, the present
claims specify how interactions with the pricing context
database "are manipulated to yield a desired result". See id.
at 1258. Rather than simply "calculate[ing] the audit amount for
the transaction based on ticket parameters provided by the
ticket data" as is done by conventional systems, the present
invention stores "data defining pricing context parameters ... in
one or more searchable databases" prior to the sale of the ticket.
See Application, paragraphs [0020] and [0033]. This step
enables the invention to, in response to later receiving ticket
parameters after the sale of the ticket, "quer[y] the pricing
context database 48 for the pricing context 52" and receive "a
price calculated by the pricing engine based on the pricing
context 52". See id. at paragraph [0038]. When these
limitations "are taken together as an ordered combination, the
claims recite an invention that is not merely the routine or
conventional use" of a computer for auditing of a transaction.
See DDR Holdings at 1259. (emphasis added).
Appellants’ arguments do not persuade us the Examiner erred. We
note DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir.
2014) was the first Federal Circuit decision to uphold the validity of e-
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commerce (business methods and software-based) patent claims after the
Supreme Court’s decision in Alice. In DDR, the Federal Circuit applied the
Supreme Court’s Alice two-step framework, and upheld the validity of
DDR’s patent on its web-page display technology. DDR, 773 F.3d at 1248.
However, we find the problem addressed by Appellants’ claims is not
similar or otherwise analogous to the specific technical problem addressed
by the subject claims in DDR. In DDR, the claims were directed to
retaining a website visitor when the visitor clicked on a third-party
merchant’s advertisement on the host website. Instead of taking the
visitor to the third-party merchant’s website (and thus losing the visitor to
the third-party merchant), DDR’s claimed system generated a hybrid web
page that: (1) displayed product information from the third party merchant,
but also, (2) retained the host website’s “look and feel.”
Here, Appellants’ claims 1—21 are silent regarding any mention of a
website or webpage, much less a website that retains the host website’s
“look and feel,” while displaying product information from the third party
merchant, as was the case in DDR, 773F.3datl257. (emphasis added).
More broadly, on this record, it is our view that Appellants have not
established that the claims on appeal attempt to solve “a challenge particular
to the Internet,” as considered by the court in DDR. Id. at 1256—57. Thus,
we find Appellants’ claimed invention does not provide a solution
“necessarily rooted in computer technology in order to overcome a problem
specifically arising in the realm of computer networks.” Id. at 1257.
In broadly but reasonably construing the claimed “processor” (claims
1—21), “pricing context database” (claims 1—21), and “memory” (claims 13—
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19), we turn to Appellants’ Specification 124 for context, and note the
supporting exemplary, non-limiting descriptions:
The processor 24 may include one or more devices selected
from microprocessors, micro-controllers, digital signal
processors, microcomputers, central processing units, field
programmable gate arrays, programmable logic devices, state
machines, logic circuits, analog circuits, digital circuits, or any
other devices that manipulate signals (analog or digital)
based on operational instructions that are stored in the memory
26. Memory 26 may include a single memory device or a
plurality of memory devices including but not limited to read­
only memory (ROM), random access memory (RAM), volatile
memory, non-volatile memory, static random access memory
(SRAM), dynamic random access memory (DRAM), flash
memory, cache memory, or any other device capable of
storing information. The mass storage memory device 28 may
include data storage devices such as a hard drive, optical drive,
tape drive, non-volatile solid state device, or any other device
capable of storing information. A database 36 may reside
on the mass storage memory device 28, and may be used to
collect and organize data used by the various systems and
modules described herein.
(Emphasis added).
Given this context, which broadly describes the claimed generic
computer components (id. ), we find nothing in the claims on appeal that
focuses on a specific means or method that improves the relevant
processor, database, or memory technology. In particular, we find the
claims on appeal are silent regarding specific limitations directed to an
improved computer processor, database, or memory.
Our reviewing court provides guidance regarding the use of such
generic computer components. See Alice, 134 S. Ct. at 2358 (holding that
“the mere recitation of a generic computer cannot transform a patent-
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ineligible abstract idea into a patent-eligible invention”); BASCOM Glob.
Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1348 (Fed. Cir.
2016) (“An abstract idea on ‘an Internet computer network’ or on a generic
computer is still an abstract idea.”) (Citation omitted) (Emphasis added);
Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1355 (Fed. Cir. 2016)
(“We have repeatedly held that such invocations of computers and networks
that are not even arguably inventive are ‘insufficient to pass the test of an
inventive concept in the application’ of an abstract idea.”) (Citation
omitted)); Intellectual Ventures I LLC v. Capital One Fin. Corp., 850 F.3d
1332, 1341 (Fed. Cir. 2017) (“Rather, the claims recite both a generic
computer element—a processor—and a series of generic computer
‘components’ that merely restate their individual functions . . . That is to
say, they merely describe the functions of the abstract idea itself, without
particularity. This is simply not enough under step two.”).
Applying the aforementioned guidance here, we conclude Appellants’
claims on appeal are not directed to an improvement in a processor,
database, or memory. Therefore, we conclude that none of the claim
limitations, viewed “both individually and as an ordered combination,”
amount to significantly more than the judicial exception in order to
sufficiently transform the nature of the claims into patent-eligible subject
matter. See Alice, 134 S. Ct. at 2355 (internal quotations omitted) (quoting
Mayo, 132 S. Ct. at 1297).
In the Appeal Brief (12), Appellants further urge: “the claims as a
whole are directed to inventions that clearly would ‘not inhibit further
discovery by improperly tying up the future use of these building blocks of
human ingenuity’. See Alice at 2354 (citing Mayo at 1301). Specifically,
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the present claims do not pre-empt uses of the abstract idea either alleged by
the Examiner or under any definition.” (Emphasis added).
Although the extent of preemption is a consideration, the absence of
complete preemption is not dispositive. See, e.g., Ariosa Diagnostics, Inc. v.
Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015) (“While preemption
may signal patent ineligible subject matter, the absence of complete
preemption does not demonstrate patent eligibility.”); Ultramercial Inc. v.
Hulu LLC, 722 F.3d 1335, 1346 (Fed. Cir. 2013) (“[T]he Supreme Court has
stated that, even if a claim does not wholly pre-empt an abstract idea, it still
will not be limited meaningfully if it contains only insignificant or token
pre- or post-solution activity—such as identifying a relevant audience, a
category of use, field of use, or technological environment.”) (Citations
omitted), vacated and remanded, WildTangent, Inv. v. Ultramercial LLC,
134 S. Ct. 2870 (2014) (remanding for consideration in light of Alice, 134 S.
Ct. 2347).
Turning to claim 1, we note that after “determining, by the processor,
an audit price for the ticket based on the first data retrieved from the
pricing context database,” then the final step of “comparing, by the
processor, the second price to the audit price” is positively recited as being
performed. However, claim 1 is silent regarding any positively recited use
of the results of the final comparison step. Therefore, we conclude claim 1
recites insignificant post-solution activity. (Emphasis added).
Thus, even if Appellants are correct that “the present claims do not
‘risk disproportionately tying up the use of the underlying ideas’ in a way
that would ‘inhibit further discovery’, and thus ‘pose no comparable risk of
pre-emption’ in determining their eligibility under 35 U.S.C. § 101” (Reply
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Br. 5) (emphasis added), the lack of complete preemption is not
dispositive. Ariosa Diagnostics, 788 F.3d at 1379.
Applying the aforementioned guidance from our reviewing courts to
the claims before us on appeal, we conclude, in our Alice analysis, that each
of Appellants’ claims 1—21, considered as a whole, is directed to (under step
one), a patent-ineligible abstract idea, and under step two, does not recite
something “significantly more” to transform the nature of the claim into a
patent-eligible application. Accordingly, for at least the reasons discussed
above, we sustain the Examiner’s rejection under 35 U.S.C. § 101 of claims
1—21, as being directed to patent-ineligible subject matter in light of Alice
and its progeny. 6
Reply Brief
To the extent Appellants may advance new arguments in the Reply
Brief not in response to a shift in the Examiner’s position in the Answer, we
note arguments raised in a Reply Brief that were not raised in the Appeal
Brief, or are not responsive to arguments raised in the Examiner’s Answer,
will not be considered except for good cause. See 37 C.F.R. § 41.41(b)(2).
Conclusion
The Examiner did not err in rejecting claims 1—21 under 35 U.S.C.
§ 101, as being directed to patent-ineligible subject matter.
6 To the extent Appellants have not advanced separate, substantive
arguments for particular claims, or other issues, such arguments are waived.
See 37 C.F.R. § 41.37(c)(l)(iv).
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DECISION
We affirm the Examiner’s decision rejecting claims 1—21 under
35 U.S.C. § 101.
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). See
37 C.F.R. §41.50(f).
AFFIRMED
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