Ex Parte Dawson et al

Patent Trial and Appeal Board

Jan 30, 2019

11755800 (P.T.A.B. Jan. 30, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
11/755,800 05/31/2007
46583 7590 02/01/2019
Roberts Mlotkowski Safran Cole & Calderon, P.C.
Intellectual Property Department
P.O. Box 10064
MCLEAN, VA 22102-8064
Christopher J. Dawson
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.
END920060244US 1 9745
EXAMINER
POINVIL, FRANTZY
ART UNIT PAPER NUMBER
3691
NOTIFICATION DATE DELIVERY MODE
02/01/2019 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):
docketing@rmsc2.com
lga11augher@rmsc2.com
secretaries@rmsc2.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHRISTOPHER J. DAWSON, PETER G. FINN,
RICK A. HAMIL TON II, and JENNY S. LI
Appeal2017-011353
Application 11/755,800 1
Technology Center 3600
Before, ANTON W. PETTING, JOSEPH A. FISCHETTI, and
MICHAEL W. KIM, Administrative Patent Judges.
FISCHETTI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner's
final rejection of claims 1-16, 19-30 and 43--46. We have jurisdiction under
35 U.S.C. § 6(b ).
1 Appellants identify International Business Machines Corporation of
Armonk, New York as the real party in interest. Appeal Br. 2.
Appeal2017-011353
Application 11/755,800
SUMMARY OF DECISION
We REVERSE.
THE INVENTION
Appellants sate "the invention generally relates to methods and
systems to establish and execute market-driven variable price offerings
among the lenders and borrowers in a bandwidth-sharing ad hoc network for
shared bandwidth usage." (Spec. 0002).
Claim 1 reproduced below, is representative of the subject matter on
appeal.
1. A method comprising establishing and executing market-driven
variable price offerings among lenders and borrowers to form a
bandwidth-sharing ad hoc network for shared bandwidth usage,
wherein the bandwidth-sharing ad hoc network is a
communication network amongst mobile computing devices of one or
more lenders and a mobile computing device of a borrower;
and
the bandwidth-sharing ad hoc network is configured such that
the borrower and the one or more lenders are in communication with
one or more remote locations via wireless telephony communication
protocol, the one or more lenders is in communication with the
borrower via local wireless communication protocol, and the one or
more lenders selectively lends bandwidth to the borrower for
downloading data from or uploading data to the one or more remote
locations.
THE REJECTION
The following rejection is before us for review.
Claims 1-16, 19-30 and 43--46 are rejected under 35 U.S.C. § 101.
2
Appeal2017-011353
Application 11/755,800
ANALYSIS
35 U.S.C. § 101 REJECTION
Claim 1 is the sole independent claim before us. As the representative
claim, the remaining claims stand or fall with claim 1. See 37 C.F.R.
§ 4I.37(c)(l)(iv) (2015).
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 Bank Int'!, 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
3
Appeal2017-011353
Application 11/755,800
economic practices (Alice, 573 U.S. at 219-20; Bilski, 561 U.S. at 611 );
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594--95 (1978)); and
mental processes (Gottschalkv. Benson, 409 U.S. 63, 69 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as "molding rubber products" (Diamond v. Diehr, 450 U.S. 175, 192
(1981) ); "tanning, dyeing, making waterproof cloth, vulcanizing India
rubber, smelting ores" (id. at 184 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; see also id. at 192 ("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., id. 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.").
4
Appeal2017-011353
Application 11/755,800
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-
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. ( 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 PTO recently published revised guidance on the application of§
101. USPTO's January 7, 2019 Memorandum, 2019 Revised Patent Subject
Matter Eligibility Guidance, 84 Fed. Reg. 50, 54 (Jan. 7, 2019) (2019
Memorandum).
Under that 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 interactions such as a fundamental
economic practice, or mental processes); and
(2) additional elements that integrate the judicial
exception into a practical application, i.e., that "apply, rely on,
or use the judicial exception in a manner that imposes a
meaningful limit on the judicial exception, such that the claim
is more than a drafting effort designed to monopolize the
judicial exception." 2019 Memorandum at 18; see also MPEP
§ 2106.05(a}-(c), (e}-(h)).
5
Appeal2017-011353
Application 11/755,800
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.
See 2019 Memorandum.
The Federal Circuit has explained that "the 'directed to' inquiry
applies a stage-one filter to claims, considered in light of the [S]pecification,
based on whether 'their character as a whole is directed to excluded subject
matter."' See Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1335
(Fed. Cir. 2016) (quoting Internet Patents Corp., 790 F.3d 1343, 1346 (Fed.
Cir. 2015)). It asks whether the focus of the claims is on a specific
improvement in relevant technology or on a process that itself qualifies as an
"abstract idea" for which computers are invoked merely as a tool. See id. at
1335-36.
In so doing, as indicated above, we apply a "directed to" two prong
test: 1) evaluate whether the claim recites a judicial exception, and 2) if the
claim recites a judicial exception, evaluate whether the claim "appl[ies],
rel[ies] on, or use[ s] the judicial exception in a manner that imposes a
meaningful limit on the judicial exception, such that the claim is more than a
6
Appeal2017-011353
Application 11/755,800
drafting effort designed to monopolize the judicial exception." 2019
Memorandum at 18.
The Examiner found, the claims are directed to "creating a contractual
relationship" "similar to concepts that have been identified as abstracts by
the courts as found in buySafe." (Final Act. 5). We agree here. The
Specification describes the invention as establishing and executing "market-
driven variable price offerings among the lenders and borrowers in a
bandwidth-sharing ad hoc network." Spec. ,r 2. We find intrinsic to an
offer, an acceptance which, when taken together with a meeting of the minds
between parties, creates a contractual relationship. Creating contractual
relationships are commercial or legal interactions which constitute methods
of organizing human activity. A method of organizing human activity
constitutes an abstraction and is not patent eligible subject matter. Alice
Corp., 134 S. Ct. at 2356.
Thus, we find that the claims recite a judicial exception of method of
organizing human activity.
But, turning to the second prong of the "directed to test", the elements
of claim 1 require:
• a communication network amongst mobile computing devices
of one or more lenders and a mobile computing device of a borrower,
• the bandwidth-sharing ad hoc network [] configured such that
the borrower and the one or more lenders are in communication with
one or more remote locations via wireless telephony communication
protocol,
7
Appeal2017-011353
Application 11/755,800
• the one or more lenders is in communication with the borrower
via local wireless communication protocol.
We find that claim 1 uses the judicial exception in a manner that imposes a
meaningful limit on the judicial exception, such that the claim is more than a
drafting effort designed to monopolize the judicial exception. See Manual of
Patent Examining Procedure ("MPEP") § 2106.05( e ). That is, the additional
elements listed above are not just a drafting effort to get by the judicial
exception, but rather they constitute the system on which the exception is
practiced which has the effect of improving the functioning of a
computer. MPEP § 2106.05(a). That effect is to make faster downloads and
uploads for borrowers:
It is often the case that a wireless device will have a relatively
fast wireless connection to other local devices and a relatively
slow wireless connection to the broader network ( e.g., the
Internet). For example, local wireless connections, provided by
protocols such as IEEE 802.lla, 802.1 lb, 802.llg, 802.15.1
(e.g., Bluetooth®), and 802.15.4 (e.g., Zigbee®) provide fast
data transfer rates of about 3 to 54 megabits per second (Mbps).
However, such transfer protocols often have a limited
maximum transmission range of about 30 to 300 ft. On the
other hand, wireless telephony protocols (e.g., EV-DO, CDMA,
EDGE, GPRS, etc.) have relatively large maximum
transmission ranges on the order of miles, but only provide data
transfer rates of about 10 kilobits per second (kbps) to 1 Mbps.
Thus, while a user of a mobile device may enjoy relatively fast
data transfer amongst local devices, the user is often limited to a
slow wireless connection to the outside world (e.g., the
Internet).
8
Appeal2017-011353
Application 11/755,800
Specification ,r 4. As such, we find that independent claim 1, the sole
independent claim before us here on appeal, qualifies as patent eligible
under 35 U.S.C. § 101.
Therefore we do not sustain the rejection of claim 1 under 35 U.S.C.
§ 101. Since claims 2-16, 19-30, and 43--46 each depend ultimately from
claim 1, and since we cannot sustain the rejection of claim 1, the rejection of
claims 2-16, 19-30, and 43--46 likewise cannot be sustained.
CONCLUSIONS OF LAW
We conclude the Examiner did err in rejecting claims 1-16, 19-30
and 43--46 under 35 U.S.C. § 101.
DECISION
The decision of the Examiner to reject claims 1-16, 19-30 and 43--46
is reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
REVERSED
9