Ex Parte Cheng

Patent Trial and Appeal Board

Apr 26, 2017

13892135 (P.T.A.B. Apr. 26, 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.
13/892,135 05/10/2013 Dongyan Cheng AB1-0186US 7546
29150 7590
LEE & HAYES, PLLC
601 W. RIVERSIDE AVENUE
SUITE 1400
SPOKANE, WA 99201
EXAMINER
JARRETT, SCOTT L
ART UNIT PAPER NUMBER
2615
NOTIFICATION DATE DELIVERY MODE
04/28/2017 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):
lhpto@leehayes.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DONGYAN CHENG1
Appeal 2017-003175
Application 13/892,135
Technology Center 2600
Before ST. JOHN COURTENAY III, THU A. DANG, and
LARRY J. HUME, Administrative Patent Judges.
DANG, Administrative Patent Judge.
DECISION ON APPEAL
I. STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s Final
Rejection of claims 1—20. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 According to Appellant the Real Party in Interest is the assignee of record,
Alibaba Group Holding Limited of Grand Cayman, Cayman Islands.
Appeal 2017-003175
Application 13/892,135
A. INVENTION
According to Appellant, the invention relates to “System and Method
for Recommending a Seller Utilizinq Identical Sequentially Order Buyer
Transaction Tracks.” (Title).
B. REPRESENTATIVE CLAIM
Claim 1 is exemplary:
1. A method comprising:
storing, on a server, a plurality of transaction records, wherein each
transaction record of the plurality of transaction records is associated with a
buyer's purchase on a corresponding seller's online shopping website;
extracting, by the server, a set of transaction records of the plurality of
transaction records, wherein the set of extracted transaction records include a
plurality of buyers and an associated plurality of sellers;
sorting, by the server, the extracted set of transaction records for each
buyer of the plurality of buyers based on a sequential ordering of the
associated plurality of sellers;
determining, by the server, a transaction track for each buyer of the
plurality of buyers based on the sorted extracted set of transaction records to
generate a group of transaction tracks;
determining, by the server, identical transaction tracks of the group of
transaction tracks by identifying transaction tracks of different buyers having
an identically sorted extracted set of transaction records;
establishing, by the server, seller associations among at least two
sellers of the associated plurality of sellers included in the identical
transaction tracks; and
in response to presenting a first seller on line shopping website to a
potential buyer, recommending by presenting on the first seller online
shopping website, by the server, a second seller based on the seller
associations.
C. REJECTION
1. Claims 1—20 stand rejected under 35 U.S.C. § 101.
2
Appeal 2017-003175
Application 13/892,135
II. ISSUE
The principal issue before us is whether the Examiner erred in finding
that a method directed to “storing,” “extracting and sorting ... a set of
transaction records,” “determining a transaction track for each buyer and
identical transaction tracks ... of different buyers,” “establishing seller
associations” and “recommending ... a second seller based on the seller
associations” (claim 1) is directed to non-statutory subject matter.
IV. ANALYSIS
Appellant contends “Independent claim 1 is directed to ‘significantly
more’ than the alleged abstract idea itself.” (App. Br. 13, 14).
In particular, Appellant contends, inter alia:
The Office has not provided any explanation, evidence, or
documentation during the entire course of prosecution that the
method of claim 1, (and independent claims 7 and 13 as well), is
well-understood, routine, and conventional in a field. If all of the
claimed steps were truly "well-understood, routine, and
conventional in a field," then the Office would be obligated to
point to a document or other evidence showing all of the
combined features that are recited in the pending claims.
(App. Br. 15).
We are not persuaded by Appellant’s arguments. Under the two-part
test articulated by the Supreme Court in Alice, “[w]e [must first] determine
whether the claims at issue are directed to a patent-ineligible concept,” such
as an abstract idea. Alice Corp. Pty. Ltd. v. CLSBanklnt'l, 134 S. Ct. 2347,
2355 (2014). Secondly, “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-eligible application.” {Id. at 2357,
internal quotations omitted).
3
Appeal 2017-003175
Application 13/892,135
Here, in rejecting the pending claims under § 101, the Examiner
analyzed the claims using the two-step Alice framework. (Final Act. 7—8).
Specifically, the Examiner notified Appellant that claims 1—20 are directed
to a concept involving “commercial” transactions by the abstract idea of
recommending sellers, and that the claim does
not include additional elements that are sufficient to amount to
significantly more than the judicial exception because the
additional limitations of storing a plurality of transaction records,
and extracting a set of transaction records simply recite
insignificant pre-solution data gathering activity. The recitation
of a server merely recites a generic computer performing generic
computer functions of receiving, processing and transmitting
data. The recitation that the transaction records are associated
with a buyer’s purchase on a seller’s online website is an attempt
to limit the use of the abstract idea to a particular environment.
(Final Act. 7).
We find the Examiner set forth a sufficient prima facie case under 35
U.S.C. § 132(a), such that the burden shifted to Appellant to explain why the
claims are patent-eligible under 35 U.S.C. § 101.
Regarding part one of the Alice two-part test, we agree with the
Examiner that the claims are “directed to the abstract idea” wherein, the
claims “do not include additional elements that are sufficient to amount to
significantly more than the judicial exception” (Final Act. 7, Ans. 4). We
also agree with the Examiner that,
The instant application does not recite an improvement in
another technology of field, nor does the instant application
recite improving the functioning of the computer itself, does not
recite a particular machine, does not effect a transformation or
reduction of a particular article to a different state or thing and
does not add a specific limitations other than what is well
understood, routine and conventional in the field.
4
Appeal 2017-003175
Application 13/892,135
The claims merely recite limitations that amount to no more than
generally linking the use of the abstract idea (providing seller
recommendations) to a generic computer/technological
environment (e.g. online, website). Accordingly the claims are
not similar to Subject Matter Eligibility Example 21 and are not
patent eligible under 35U.S.C. 101.
(Ans. 7).
Abstract ideas that have been identified by courts include, for
example, fundamental economic practices, certain methods of organizing
human activities, an idea “of itself,” and mathematical
relationships/formulas. Alice, 134 S. Ct. at 2355-56. We find claim l’s
seller recommendations to be directed to business transactions which we
consider both a fundamental economic practice and a method or organizing
human activity by prodding people to make additional purchases.
We further agree with the Examiner’s finding that the claimed steps
(“storing,” “extracting,” “sorting,” “determining,” “establishing,” and
“recommending”) could be performed as mental steps . . ., steps a user
performs prior to causing the server to perform the claimed rendering.
(Ans. 8). That is, these steps can be performed by human thought alone and
thus are merely abstract ideas that are not patent-eligible under § 101. 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
Gottschalk v. Benson”). That is, “a method that can be performed by human
thought alone is merely an abstract idea and is not patent-eligible under §
101.” {Id. at 1373.); see also Enfish, LLC v. Microsoft Corp., 822 F.3d 1327,
1335 (Fed. Cir. 2016) (“For instance, fundamental economic and
5
Appeal 2017-003175
Application 13/892,135
conventional business practices are often found to be abstract ideas, even if
performed on a computer.”).
Although Appellant argues that its “specific method of providing
recommendations to buyers ‘cannot be said, as a matter of law, to have been
conventional or generic’ (see Bascom)” (App. Br. 20-21), we are not
persuaded, because Bascom’s patent claimed a technology-based solution
(not an abstract-idea-based solution implemented with generic technical
components in a conventional way) to filter content on the Internet that
overcame existing problems with other Internet filtering systems and
improved the performance of the computer system itself. (Bascom, 827 F.3d
1341, 1351 (Fed. Circ. 2016)).
We additionally refer to Content Extraction, where the Federal Circuit
has provided additional guidance on the issue of statutory subject matter, by
holding that claims to collecting data, recognizing certain data within the
collected data set, and storing that recognized data in memory, were directed
to an abstract idea and therefore unpatentable under § 101. Content
Extraction & Transmission LLC v. Wells Fargo Bank, N.A., 776 F.3d 1343
(Fed. Cir. 2014).
Regarding part two of the Alice test, we find merely appending purely
conventional steps (such as “storing,” “extracting,” “sorting,” “determining,”
“establishing,” and “recommending”) to an abstract idea does not supply a
sufficiently inventive concept. See Alice Corp. 134 S. Ct. at 2357-58.
Although these individual steps in claim 1 present a specific approach
associated with a business transaction, none of these steps transform the
nature of the claim to patent-eligible subject matter. Id. at 2355 (citing
Mayo, 132 S. Ct. at 1297, 1298). They do no more than narrow the scope of
6
Appeal 2017-003175
Application 13/892,135
the abstract idea. They do not change its character so that the claim may be
said to describe a solution to a problem that is rooted in technology.
Here, we agree with the Examiner that the claims “fail to improve the
underlying technology” and “are not directed to improving computer
performance,” and thus do not pass step two of Alice (Ans. 8), since they fail
to contain an inventive concept sufficient to transform the claimed abstract
idea into a patent-eligible application.
Appellant additionally cites to USPTO examination guidelines, i.e.,
claim 2 of Example 21 from the Updated Guidelines, in arguing similarities
with claim 1. (App. Br. 16—17). We have considered these guidelines,
which are based on controlling case law and USPTO policy at the time the
guidelines were issued. However, the PTAB applies relevant U.S. Supreme
Court and Federal Circuit case law to the facts of each patent application on
appeal, and does not rely on policy guidelines intended to train Patent
Examiners as a controlling legal authority.
Accordingly, on this record, we are not persuaded of error in the
Examiner's rejection under 35 U.S.C. § 101 of independent claim 1, or in the
§101 rejection of independent claims 7 and 13, which recite the language of
claim 1 in similar or commensurate form.
In view of the lack of any substantive or separate arguments directed
to the § 101 rejection of dependent claims 2—6, 8—12, and 14—20 (see App.
Br. 24—25), we sustain the Examiner's rejection of these claims, as they fall
with their respective independent claims. Arguments not made are waived.
7
Appeal 2017-003175
Application 13/892,135
V. CONCLUSION AND DECISION
We affirm the Examiner’s rejections of claims 1—20 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).
AFFIRMED
8