Ex Parte Drake

Patent Trial and Appeal Board

May 4, 2017

13963760 (P.T.A.B. May. 4, 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.
13/963,760 08/09/2013 David G. Drake 05391-P0009B 7343
24126 7590 05/08/2017
ST. ONGE STEWARD JOHNSTON & REENS, LLC
986 BEDFORD STREET
STAMFORD, CT 06905-5619
EXAMINER
DONLON, RYAN D
ART UNIT PAPER NUMBER
3695
NOTIFICATION DATE DELIVERY MODE
05/08/2017 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
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID G. DRAKE
Appeal 2016-001490
Application 13/963,760
Technology Center 3600
Before HUBERT C. LORIN, BIBHU R. MOHANTY, and
BRUCE T. WIEDER Administrative Patent Judges.
MOHANTY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellant seeks our review under 35 U.S.C. § 134 of the final
rejection of claims 1—9, 11, and 13—19 which are all the claims pending in
the application. We have jurisdiction under 35 U.S.C. § 6(b). Oral
arguments were presented on May 1, 2017 by video conference.
SUMMARY OF THE DECISION
We AFFIRM.
Appeal 2016-001490
Application 13/963,760
THE INVENTION
The Appellant’s claimed invention is directed to providing a system
for processing and filtering donation information (Spec., para. 6). Claim 15,
reproduced below, is representative of the subject matter on appeal.
15. A method for managing donation information associated with
charitable contributions with a website such that only part of the
donation information is accessible by a charitable entity organized in a
first state in order to reduce reporting requirements to a state other
than the first state comprising the steps of:
providing a web server having software executing thereon;
receiving via said web server data transmitted to said web server from
a donor computer, said data indicative of a donation request to an
entity wherein the entity is a charitable entity having an address;
comparing the address of said entity with an address field of said data
via said software;
generating a plurality of records via said software to create a
first data set, each said record excluding address field when said
address of said entity and said address field include different states;
associating said first data set with said entity via said software;
and allowing access to said first data set by said entity via the
web server.
THE REJECTIONS
The following rejections is before us for review:
Claims 1—9, 11, and 13—19 are rejected under 35 U.S.C. § 101 as
being directed to non-statutory subject matter.
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Appeal 2016-001490
Application 13/963,760
FINDINGS OF FACT
We have determined that the findings of fact in the Analysis section
below are supported at least by a preponderance of the evidence.1
ANALYSIS
The Appellant argues that the rejection of claims 1—9, 11, and 13—19
under 35 U.S.C. § 101 is improper because the Examiner has failed to
present a prima facie case, that the claims do not preempt the abstract idea,
and that the claims are directed to “substantially more” than the abstract idea
(App. Br. 6—11, Reply Br. 2—7).
In contrast, the Examiner has determined that the rejection is proper
(Ans. 3—5).
We agree with the Examiner. Under 35 U.S.C. § 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. The Supreme Court, however,
has long interpreted § 101 to include an implicit exception: “laws of nature,
natural phenomena, and abstract ideas” are not patentable. See, e.g., Alice
Corp. Pty Ltd. v. CLS Bank Inti, 134 S. Ct. 2347, 2354 (2014).
Claim 15 is representative of the subject matter claimed. In judging
whether claim 15 falls within the excluded category of abstract ideas, we are
guided in our analysis by the Supreme Court’s two-step framework,
described in Mayo and Alice. Id. at 2355 (citing Mayo Collaborative Servs.
v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1296—97 (2012)). In accordance
1 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(explaining the general evidentiary standard for proceedings before the
Patent Office).
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Appeal 2016-001490
Application 13/963,760
with that framework, we first determine whether the claim is “directed to” a
patent-ineligible abstract idea. If so, we then consider the elements of the
claim both individually and as “an ordered combination” to determine
whether the additional elements “transform the nature of the claim” into a
patent-eligible application of the abstract idea. Id. This is a search for an
“inventive concept,” an element or combination of elements sufficient to
ensure that the claim amounts to “significantly more” than the abstract idea
itself. Id. The Court also stated that “the mere recitation of a generic
computer cannot transform a patent-ineligible abstract idea into a patent-
eligible invention.” Id. at 2358.
Here, the Examiner has determined that the claim is directed to an
abstract idea in a method of organizing human activities and fundamental
economic practice in the concept of donation and charity compliance with
rules (Final Rej. 2, 3). We agree that the claim is directed to a method of
organizing human activities in organizing data fields and that charitable
donation giving is fundamental economic practice long prevalent in our
system of commerce, and is an abstract idea beyond the scope of § 101. The
Appellant states that they do not dispute this general characterization of the
claim being an abstract idea (App. Br. 6).
We next consider whether additional elements of the claim, both
individually and as an ordered combination, transform the nature of the
claim into a patent-eligible application of the abstract idea, e.g., whether the
claim does more than simply instruct the practitioner to implement the
abstract idea over the Internet, using generic computer components. We
conclude that it does not.
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Appeal 2016-001490
Application 13/963,760
Considering each of the claim elements in turn, the function
performed by the computer system at each step of the process is purely
conventional. Each step of the claimed method does no more than require a
generic computer to perform a generic computer function. The Appellant
has argued that the Examiner has determined that the elements recited in the
claim are “conventional” but cited no evidence to show that the combination
of elements is “conventional” in application. The elements recited in the
claim to carry out the abstract method include for example a conventional
web server and computer. Here, these elements both individually and as an
ordered combination fail to transform the abstract nature of the claim. While
the Appellant argues that the Examiner has failed to cite any evidence, here
one of ordinary skill in the art would have known that a web server and
computer are both conventional elements, and in this case we determine that
both individually and as an ordered combination they fail to transform the
abstract nature of the claim.
We note the point about pre-emption (App. Br. 7, 8). While pre­
emption “might tend to impede innovation more than it would tend to
promote it, ‘thereby thwarting the primary object of the patent laws’” {Alice,
134 S. Ct. at 2354 (quoting Mayo Collaborative Servs. v. Prometheus Labs.,
Inc., 132 S. Ct. 1289, 1293 (2012)), “the absence of complete preemption
does not demonstrate patent eligibility” (Ariosa Diagnostics, Inc. v.
Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015)). See also OIP
Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362—63 (Fed. Cir. 2015),
cert, denied, 136 S. Ct. 701, 193 (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.”).
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Appeal 2016-001490
Application 13/963,760
For these reasons the rejection of claim 15 is sustained. The
Appellant has presented the same arguments for the remaining claims and
the rejection of these claims is sustained for the same reasons given above as
those claims are drawn to similar subject matter.
CONCLUSIONS OF LAW
We conclude that Appellant has not shown that the Examiner erred in
rejecting claims 1—9, 11, and 13—19 under 35 U.S.C. § 101.
DECISION
The Examiner’s rejection of claims 1—9, 11, and 13—19 is sustained.
AFFIRMED
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