Ex Parte Drummond

Patent Trials and Appeals Board

Jun 20, 2019

10824954 - (D) (P.T.A.B. Jun. 20, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
10/824,954 04/14/2004
63710 7590 06/24/2019
INNOVATION DIVISION
CANTOR FITZGERALD, L.P.
110 EAST 59TH STREET (6TH FLOOR)
NEW YORK, NY 10022
FIRST NAMED INVENTOR
Stephen M. Drummond
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.
03-1077 7464
EXAMINER
MINCARELLI, JAN P
ART UNIT PAPER NUMBER
3689
NOTIFICATION DATE DELIVERY MODE
06/24/2019 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):
patentdocketing@cantor.com
lkorovich@cantor.com
phowe@cantor.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEPHEN M. DRUMMOND
Appeal2017-004412
Application 10/824,954 1
Technology Center 3600
Before ANTON W. PETTING, BIBHU R. MOHANTY, and
NINA L. MEDLOCK, Administrative Patent Judges.
PETTING, Administrative Patent Judge.
DECISION ON APPEAL
1 According to Appellant, the real party in interest is BGC Partners, Inc.
(Appeal Br. 2).
Appeal2017-004412
Application 10/824,954
STATEMENT OF THE CASE2
Stephen M. Drummond (Appellant) seeks review under
35 U.S.C. § 134 of the Final rejection of claims 13, 14, 20, 21, and 50-71,
the only claims pending in the application on appeal. We have jurisdiction
over the appeal pursuant to 35 U.S.C. § 6(b).
The Appellant invented a way of allowing a warehouse to provide
emission reduction benefits to buyers and customers. Specification para. 2.
An understanding of the invention can be derived from a reading of
exemplary claim 13, which is reproduced below (bracketed matter and some
paragraphing added).
13. A method comprising:
[1] receiving, via a processor, a request to purchase an
item or a service;
[2] computing, via the processor, an amount of carbon
dioxide equivalent emissions that is generated by a
production of the purchased item or service;
[3] receiving a selection of a button at a point of sale
terminal, in which the button indicates a desire to neutralize
the purchased item or service;
[ 4] computing, via the processor, a quantity of units that
is necessary for neutralizing the amount of carbon dioxide
equivalent emissions that is generated by the production of
the purchased item or service;
[5] execute in a single transaction, via the processor, a
purchase of the item or the service together with a purchase
of the quantity of units that is used to neutralize the amount
of carbon dioxide equivalent emissions; and
2 Our decision will make reference to the Appellant's Appeal Brief ("App.
Br.," filed September 19, 2016) and Reply Brief ("Reply Br.," filed January
17, 2017), and the Examiner's Answer ("Ans.," mailed November 17, 2016),
and Final Action ("Final Act.," mailed August 17, 2015).
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[6] transmitting, via the processor, an emission retirement
guarantee that prevents repurchasing of the quantity of units
that are used to neutralize the amount of carbon dioxide
equivalent emissions.
The Examiner relies upon the following prior art:
Soestbergen US 2002/0143693 Al
Barrett US 2003/0135490 Al
McMorris
Mueller
US 2004/0230443 Al
US 7,542,919 Bl
Oct. 3, 2002
July 17, 2003
Nov. 18, 2004
June 2, 2009
Claims 13, 14, 20, 21, and 50-71 stand rejected under 35 U.S.C.
§ 112(a) as lacking a supporting written description within the original
disclosure.
Claims 13, 14, 20, 21, and 50-71 stand rejected under 35 U.S.C. § 101
as directed to a judicial exception without significantly more.
Claims 13, 14, 20, 21, 50, 56-63 and 69-71 stand rejected under
35 U.S.C. § I03(a) as unpatentable over Soestbergen, McMorris, Mueller.
Claims 51-55 and 64--68 stand rejected under 35 U.S.C. § I03(a) as
unpatentable over Soestbergen, McMorris, Muellerr, and Barrett.
ISSUES
The issues of written description matter tum primarily on whether a
purchase transaction is so generic as to require multiple examples to show
possess10n.
The issues of eligible subject matter tum primarily on whether the
claims recite more than abstract conceptual advice of results desired
The issues of obviousness tum primarily on whether the art describes
the limitations.
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FACTS PERTINENT TO THE ISSUES
The following enumerated Findings of Fact (FF) are believed to be
supported by a preponderance of the evidence.
Facts Related to Claim Construction
01. The disclosure contains no lexicographic definition of
"neutralize."
02. "Emission retirement guarantee" is defined as "the promise of
retirement of an emission reduction benefit." Spec. para. 10.
Table.
Facts Related to the Prior Art
Soestbergen
03. Soestbergen is directed to banking and trading of emission
reduction credits (ERC's). Soestbergen para. 4.
04. Soestbergen describes (a) receiving information to identify a
customer account; (b) receiving input to identify a type of carbon
source; ( c) receiving input data used to calculate energy
consumption and emissions output of the carbon source;
(d) calculating greenhouse gas (GHG) emissions value produced
by the carbon source; and ( e) debiting the GHG value from the
customer account. Soestbergen para. 17.
McMorris
05. McMorris is directed to environmental emissions, and in
particular to the creation, aggregation, transfer, and accounting
thereof. McMorris para. 2.
06. McMorris describes selling of one or more of a plurality of
environmental emission removal units on standardized terms,
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which may include establishing a pool of environmental emission
reduction units, wherein the pool is accessed during a point of sale
event for reducing at least a portion of the environmental
emissions resulting from the point of sale event or service, such as
airline ticket use, purchasing fuel at the pump, or offsetting the
emissions associated with the manufacture of goods or products,
such as an automobile or of services, such as the generation of
electricity. McMorris para. 99.
Mueller
07. Mueller is directed to selecting one or more supplemental
products or services to offer for sale to a customer during a
transaction. Mueller 1 :25-29.
08. Mueller describes the user's selection or acceptance of a
supplemental product being received via a touch screen on the
user device or point-of-sale terminal. Mueller 25:30-33.
ANALYSIS
Initially we construe some ambiguous claim limitations.
The Specification does not define or even use the term "neutralize."
The Specification does use the term "emission neutrality" as in "present the
concept of emission neutrality to buyer." Spec. para. 81. Thus we construe
"desire to neutralize the purchased item or service" in limitation 3 of claim
13 to mean a desire to do something to make the purchased item or service
emission neutral. In particular, to neutralize the purchase does not mean to
reverse or void the purchase transaction itself.
"Emission retirement guarantee" is defined as "the promise of
retirement of an emission reduction benefit." FF 02. Thus an emission
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retirement guarantee is a promise, which is a moral or legal entity, and not a
technological function or structure.
Claims 13, 14, 20, 21, and 50---71 rejected under 35 U.S.C. § l l 2(a) as
lacking a supporting written description within the original disclosure
We are persuaded by Appellant's argument that the facts in this case
are distinguishable from those in Ariad Pharmaceuticals v. Eli Lilly and Co.,
598 F.3d 1336 (Fed. Cir. 2010). Reply Br. 3. The claims here only require
identification of goods and services to perform the transaction. Even one
example is sufficient to show possession of the manner of making such a
transaction. The Examiner determines that there are insufficient examples of
goods and services to satisfy the Ariad requirement. Final Act. 3. But the
claim does not depend on the goods or services per se, but rather
identification of the goods and services in a purchase transaction. Such
identification is standard fare for purchase transactions, and generally
independent of the exact nature of the particular good or service. Even
limitations 2 and 4 of computing units for neutralizing emissions, nominally
beyond such standard fare, requires no more than looking up a pre-computed
number based on the identification and multiplying by the quantity. "[T]he
carbon management application may assess the buyer's products, services,
and/ or processes and determine the amount of C02e emissions generated."
Spec. para. 85.
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Claims 13, 14, 20, 21, and 50---71 rejected under 35 U.S.C. § 1 OJ as directed
to a judicial exception without significantly more
STEP 12
Claim 13, as a method claim, nominally recites one of the enumerated
categories of eligible subject matter in 35 U.S.C. § 101. The issue before us
is whether it is directed to a judicial exception without significantly more.
STEP2
The Supreme Court
set forth a framework for distinguishing patents that claim
laws of nature, natural phenomena, and abstract ideas from
those that claim patent-eligible applications of those
concepts. First, []determine whether the claims at issue
are directed to one of those patent-ineligible concepts. If
so, we then ask, "[ w ]hat else is there in the claims before
us? To answer that question,[] consider the elements of
each 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. [The Court] described step two of
this analysis as a search for an "'inventive concept'"-i.e.,
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. v CLS Bank Intl, 573 U.S. 208, 217-18 (2014) (citations
omitted) ( citing Mayo Collaborative Services v. Prometheus Laboratories,
Inc., 566 U.S. 66 (2012)). To perform this test, we must first determine
what the claims are directed to. This begins by determining whether the
3 For continuity of analysis, we adopt the steps nomenclature from 2019
Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7,
2019) ("Revised Guidance").
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claims recite one of the judicial exceptions ( a law of nature, a natural
phenomenon, or an abstract idea). Then, if claims recite a judicial
exception, determining whether the claims at issue are directed to the recited
judicial exception, or whether the recited judicial exception is integrated into
a practical application of that exception, i.e., that the claims "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." Revised Guidance, 84 Fed.
Reg. at 54. If the claims are directed to a judicial exception, then finally
determining whether the claims provide an inventive concept because the
additional elements recited in the claims provide significantly more than the
recited judicial exception.
STEP 2A Prong 1
At a high level, and for our preliminary analysis, we note that method
claim 13 recites receiving request data, computing data representing an
emissions amount, receiving selection data, computing emissions amount
data, receiving selection data, computing units data, performing a generic
purchase transaction for two items, and transmitting a guarantee, which is
data representing a promise. Computing data is rudimentary data analysis.
Performing a generic purchase transaction is a combination of data retrieval,
analysis, and update. Thus, claim 13 recites receiving, analyzing, updating,
and transmitting data. None of the limitations recites technological
implementation details for any of these steps, but instead recite only results
desired by any and all possible means.
From this we see that claim 13 does not recite the judicial exceptions
of either natural phenomena or laws of nature.
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Under Supreme Court precedent, claims directed purely to an abstract
idea are patentineligible. As set forth in the Revised Guidance, which
extracts and synthesizes key concepts identified by the courts, abstract ideas
include: (1) mathematical concepts, 4 (2) certain methods of organizing
human activity, 5 and (3) mental processes. 6 Among those certain methods
of organizing human activity listed in the Revised Guidance are commercial
or legal interactions. Like those concepts, claim 13 recites the concept of a
purchase transaction that includes emission credits. Specifically, claim 13
recites operations that would ordinarily take place in advising one to
transmit a promise and make a purchase of both a good or service and
emission credits represented by the promise after computing the quantity of
credit units. The advice to transmit a promise and make a purchase of both a
good or service and emission credits represented by the promise after
computing the quantity of credit units involves making a purchase, which is
an economic act, and computing the purchase amounts, which is an act
ordinarily performed in the stream of commerce. For example, claim 13
recites "execute ... a purchase of the item or the service," which is an
4 See, e.g., Gottschalk v. Benson, 409 U.S. 63, 71-72 (1972); Bilski v.
Kappas, 561 U.S. 593, 611 (2010); Mackay Radio & Telegraph Co. v. Radio
Corp. of Am., 306 U.S. 86, 94 (1939); and SAP Am., Inc. v. InvestPic, LLC,
898 F.3d 1161, 1163 (Fed. Cir. 2018).
5 See, e.g., Bilski, 561 U.S. at 628; Alice, 573 U.S. at 219-20; Ultramercial,
Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed Cir. 2014); Smart Sys.
Innovations, LLC v. Chicago Transit Auth., 873 F.3d 1364, 1383 (Fed. Cir.
2017); and In re Marco Guldenaar Holding B. V., 911 F.3d 1157, 1160-61
(Fed. Cir. 2018).
6 See, e.g., Benson, 409 U.S. at 67; CyberSource Corp. v. Retail Decisions,
Inc., 654 F.3d 1366, 1371-72 (Fed. Cir. 2011); Intellectual Ventures I LLC
v. Symantec Corp., 838 F.3d 1307, 1318 (Fed. Cir. 2016).
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activity that would take place whenever one is making a purchase.
Similarly, claim 1 recites "receiving ... a request to purchase an item or a
service," which is also characteristic of making a purchase.
The Examiner determines the claims to be directed to bundling a
carbon emission offset sufficient to offset a purchased item or service. Final
Act. 7.
The preamble to claim 13 does not recite what it is to achieve, but the
steps in claim 13 result in a purchase and a transmitted guarantee (promise)
absent any technological mechanism other than a conventional computer for
doing so.
As to the specific limitations, limitations 1 and 3 recite data retrieval.
Limitation 6 recites insignificant transmitting of promise data. Limitations 2
and 4 recite rudimentary analysis by way of mathematical algorithms, and
limitation 5 recites a generic conventional purchase transaction, which
advises one to apply generic functions to get to these results. The limitations
thus recite advice for transmitting a promise and making a purchase of both
a good or service and emission credits represented by the promise after
computing the quantity of credit units. To advocate transmitting a promise
and making a purchase of both a good or service and emission credits
represented by the promise after computing the quantity of credit units is
conceptual advice for results desired and not technological operations.
The Specification at paragraph 2 describes the invention as relating to
allowing a warehouse to provide emission reduction benefits to buyers and
customers. Thus, all this intrinsic evidence shows that claim 13 is directed
to purchasing emission reduction credits as part of a conventional purchase,
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i.e. a purchase transaction that includes emission credits. This is consistent
with the Examiner's determination.
This in tum is an example of commercial or legal interactions as a certain
method of organizing human activity because purchasing is a generic
business transaction. The concept of a purchase transaction that includes
emission credits by transmitting a promise and making a purchase of both a
good or service and emission credits represented by the promise after
computing the quantity of credit units is one idea for using a purchase
transaction to fund emission reductions. The steps recited in claim 13 are
part of how this might conceptually be premised.
Our reviewing court has found claims to be directed to abstract ideas
when they recited similar subject matter. Smart Sys. Innovations, LLC v.
Chicago Transit Auth., 873 F.3d 1364, 1372 (Fed. Cir. 2017) (purchase of a
fare product).
Alternately, this is an example of concepts performed in the human mind
as mental processes because the steps of receiving, analyzing, updating, and
transmitting data mimic human thought processes of observation, evaluation,
judgment, and opinion, perhaps with paper and pencil, where the data
interpretation is perceptible only in the human mind. See In re TL!
Commc 'ns LLC Patent Litig., 823 F.3d 607, 611 (Fed. Cir. 2016);
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093-94 (Fed. Cir.
2016). Claim 13, unlike the claims found non-abstract in prior cases, uses
generic computer technology to perform data reception, analysis, update,
and transmission and does not recite an improvement to a particular
computer technology. See, e.g., McRO, Inc. v. Bandai Namco Games Am.
Inc., 837 F.3d 1299, 1314--15 (Fed. Cir. 2016) (Finding claims not abstract
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because they "focused on a specific asserted improvement in computer
animation."). As such, claim 13 is directed to receiving, analyzing,
updating, and transmitting data, and not a technological implementation or
application of that idea.
From this we conclude that at least to this degree, claim 13 is directed
to a purchase transaction that includes emission credits by transmitting a
promise and making a purchase of both a good or service and emission
credits represented by the promise after computing the quantity of credit
units, which is a commercial and legal interaction, one of certain methods of
organizing human activity identified in the Revised Guidance, and, thus, an
abstract idea.
STEP 2A Prong 2
The next issue is whether claim 13 not only recites, but is more
precisely directed to this concept itself or whether it is instead directed to
some technological implementation or application of, or improvement to,
this concept i.e. integrated into a practical application. 7
At the same time, we tread carefully in construing this
exclusionary principle lest it swallow all of patent law. At
some level, "all inventions ... embody, use, reflect, rest upon,
or apply laws of nature, natural phenomena, or abstract ideas."
Thus, an invention is not rendered ineligible for patent simply
because it involves an abstract concept. "[A]pplication[s]" of
such concepts "'to a new and useful end,"' we have said,
remain eligible for patent protection. Accordingly, in applying
the § 101 exception, we must distinguish between patents that
claim the "buildin[g] block[s]" of human ingenuity and those
that integrate the building blocks into something more.
7 See, e.g., Alice, 573 U.S. at 223, discussing Diamond v. Diehr, 450 U.S.
175 (1981).
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Alice, 573 U.S. at 217 (citations omitted).
Taking the claim elements separately, the operation performed by the
computer at each step of the process is expressed purely in terms of results,
devoid of implementation details. Steps 1 and 3 are pure data gathering
steps. Limitations describing the nature of the data do not alter this. Step 6
is insignificant post solution activity, such as storing, transmitting, or
displaying the results. Steps 2, 4, and 5 recite generic computer processing
expressed in terms of results desired by any and all possible means and so
present no more than conceptual advice. All purported inventive aspects
reside in how the data are interpreted and the results desired, and not in how
the process physically enforces such a data interpretation or in how the
processing technologically achieves those results.
Viewed as a whole, Appellant's claim 13 simply recites the concept of a
purchase transaction that includes emission credits by transmitting a promise
and making a purchase of both a good or service and emission credits
represented by the promise after computing the quantity of credit units as
performed by a generic computer. This is no more than conceptual advice
on the parameters for this concept and the generic computer processes
necessary to process those parameters, and does not recite any particular
implementation.
Claim 13 does not, for example, purport to improve the functioning of the
computer itself. Nor does it effect an improvement in any other technology
or technical field. The Specification spells out different generic equipment8
and parameters that might be applied using this concept and the particular
8 The Specification describes a processor, a computer, a data processing
device. Spec. para. 44.
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steps such conventional processing would entail based on the concept of a
purchase transaction that includes emission credits by transmitting a promise
and making a purchase of both a good or service and emission credits
represented by the promise after computing the quantity of credit units under
different scenarios. It does not describe any particular improvement in the
manner a computer functions. Instead, claim 13 at issue amounts to nothing
significantly more than an instruction to apply a purchase transaction that
includes emission credits by transmitting a promise and making a purchase
of both a good or service and emission credits represented by the promise
after computing the quantity of credit units using some unspecified, generic
computer. Under our precedents, that is not enough to transform an abstract
idea into a patent-eligible invention. See Alice, 573 U.S. at 225-26.
None of the limitations reflects an improvement in the functioning of a
computer, or an improvement to other technology or technical field, applies
or uses a judicial exception to effect a particular treatment or prophylaxis for
a disease or medical condition, implements a judicial exception with, or uses
a judicial exception in conjunction with, a particular machine or manufacture
that is integral to the claim, effects a transformation or reduction of a
particular article to a different state or thing, or applies or uses the judicial
exception in some other meaningful way beyond generally linking the use of
the judicial exception to a particular technological environment, such that
the claim as a whole is more than a drafting effort designed to monopolize
the exception.
We conclude that claim 13 is directed to achieving the result of a
purchase transaction that includes emission credits by advising one to
transmit a promise and make a purchase of both a good or service and
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emission credits represented by the promise after computing the quantity of
credit units, as distinguished from a technological improvement for
achieving or applying that result. This amounts to commercial or legal
interactions, which fall within certain methods of organizing human activity
that constitute abstract ideas. The claim does not integrate the judicial
exception into a practical application.
STEP 2B
The next issue is whether claim 13 provides an inventive concept because
the additional elements recited in the claim provide significantly more than
the recited judicial exception.
The introduction of a computer into the claims does not generally alter
the analysis at Mayo step two.
the mere recitation of a generic computer cannot transform a
patent-ineligible abstract idea into a patent-eligible invention.
Stating an abstract idea "while adding the words 'apply it'" is
not enough for patent eligibility. Nor is limiting the use of an
abstract idea "'to a particular technological environment."'
Stating an abstract idea while adding the words "apply it with a
computer" simply combines those two steps, with the same
deficient result. Thus, if a patent's recitation of a computer
amounts to a mere instruction to "implement[t]" an abstract
idea "on ... a computer," that addition cannot impart patent
eligibility. This conclusion accords with the preemption
concern that undergirds our § 101 jurisprudence. Given the
ubiquity of computers, wholly generic computer
implementation is not generally the sort of "additional
feature[ e ]" that provides any "practical assurance that the
process is more than a drafting effort designed to monopolize
the [ abstract idea] itself."
Alice, 573 U.S. at 223-24 (citations omitted).
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"[T]he relevant question is whether the claims here do more than simply
instruct the practitioner to implement the abstract idea [] on a generic
computer." Alice, 573 U.S. at 225. They do not.
Taking the claim elements separately, the function performed by the
computer at each step of the process is purely conventional. Using a
computer for receiving, analyzing, updating, and transmitting data amounts
to electronic data query and retrieval----one of the most basic functions of a
computer. All of these computer functions are generic, routine, conventional
computer activities that are performed only for their conventional uses. See
Elec. Power Grp. v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016). See
also In re Katz Interactive Call Processing Patent Litig., 639 F.3d 1303,
1316 (Fed. Cir. 2011) ("Absent a possible narrower construction of the terms
'processing,' 'receiving,' and 'storing,'[] those functions can be achieved by
any general purpose computer without special programming."). None of
these activities are used in some unconventional manner nor do any produce
some unexpected result. Appellant does not contend to have invented any of
these activities. In short, each step does no more than require a generic
computer to perform generic computer functions. As to the data operated
upon, "even if a process of collecting and analyzing information is 'limited
to particular content' or a particular 'source,' that limitation does not make
the collection and analysis other than abstract." SAP Am., Inc. v. InvestPic
LLC, 898 F.3d 1161, 1168 (Fed. Cir. 2018).
Considered as an ordered combination, the computer components of
Appellant's claim 13 add nothing that is not already present when the steps
are considered separately. The sequence of data reception-analysis-update-
transmission is equally generic and conventional. See Ultramercial, Inc. v.
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Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014) (sequence of receiving,
selecting, offering for exchange, display, allowing access, and receiving
payment recited an abstraction); Inventor Holdings, LLC v. Bed Bath &
Beyond, Inc., 876 F.3d 1372, 1378 (Fed. Cir. 2017) (sequence of data
retrieval, analysis, modification, generation, display, and transmission);
Two-Way Media Ltd. v. Comcast Cable Commc'ns, LLC, 874 F.3d 1329,
1339 (Fed. Cir. 2017) (sequence of processing, routing, controlling, and
monitoring). The ordering of the steps is therefore ordinary and
conventional.
We conclude that claim 13 does not provide an inventive concept
because the additional elements recited in the claim do not provide
significantly more than the recited judicial exception.
REMAINING CLAIMS
Claim 13 is representative. The remaining method claims merely
describe process parameters. We conclude that the method claims at issue
are directed to a patent-ineligible concept itself, and not to the practical
application of that concept.
As to the structural claims, they
are no different from the method claims in substance. The
method claims recite the abstract idea implemented on a generic
computer; the system claims recite a handful of generic
computer components configured to implement the same idea.
This Court has long "warn[ ed] ... against" interpreting § 101
"in ways that make patent eligibility 'depend simply on the
draftsman's art. '"
Alice, 573 U.S. at 226. As a corollary, the claims are not directed to any
particular machine.
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LEGAL CONCLUSION
From these determinations we further determine that the claims do not
recite an improvement to the functioning of the computer itself or to any
other technology or technical field, a particular machine, a particular
transformation, or other meaningful limitations. From this we conclude the
claims are directed to the judicial exception of the abstract idea of certain
methods of organizing human activity as exemplified by the commercial and
legal interaction of a purchase transaction that includes emission credits by
transmitting a promise and making a purchase of both a good or service and
emission credits represented by the promise after computing the quantity of
credit units, without significantly more.
APPELLANT'S ARGUMENTS
As to Appellant's Appeal Brief arguments, we adopt the Examiner's
determinations and analysis from Final Action 6-9 and Answer 7-16 and
reach similar legal conclusions. We now tum to the Reply Brief.
We are not persuaded by Appellant's argument that "the Examiner's
Answer fails to identify any additional elements and fails to explain why
each additional element does not add significantly more to the alleged
abstract idea." Reply Br. 4. The Examiner identifies such elements at
Answer 4. This is further elaborated on supra.
We are not persuaded by Appellant's argument that "the combination
of elements recited in the amended claims perform functions that are not
generic computer functions." Reply Br. 5. Each element as well as their
combination is shown to be generic supra. Appellant goes on to contend the
claims meet the significantly more requirement, but provide no evidence to
support this conclusory assertion. Id. Appellant also contends the
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dependent claims are eligible, but also provides no evidence or even
arguments as to particular claims. Id.
We are not persuaded by Appellant's argument that "the claims recite
significantly more than the alleged abstract idea." Id. Appellant only refers
to the Appeal Brief arguments, except for claim 50, for which Appellant
only recites the claim limitations. This is insufficient to act as a separate
argument under 37 C.F.R. § 41.37. As our reviewing court held, "we hold
that the Board reasonably interpreted Rule 41.37 to require more substantive
arguments in an appeal brief than a mere recitation of the claim elements and
a naked assertion that the corresponding elements were not found in the
prior art." See In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011).
We are not persuaded by Appellant's argument that the Examiner
failed to provide a separate analysis for each claim. Reply Br. 6. The
Examiner is required to consider and examine each claim separately.
Summarization of the results of such consideration and examination is
allowed and encouraged to avoid burying the results in detail.
We are not persuaded by Appellant's argument that "[t]he Examiner's
Answer has not shown that the claims 'tie up' the alleged abstract idea or
pre-empt others from using the alleged abstract idea." Id. "Where a patent's
claims are deemed only to disclose patent ineligible subject matter under the
Mayo [/Alice] framework, as they are in this case, preemption concerns are
fully addressed and made moot." Ariosa Diagnostics, Inc. v. Sequenom,
Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015).
We are not persuaded by Appellant's argument that "[t]he Examiner's
Answer fails to 'refer to the body of case law precedent ... to identify
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abstract ideas by way of comparison to concepts already found to be
abstract.'" Id. Such case law is presented supra.
Appellant further argues that the asserted claims are akin to the
claims found patent-eligible in DDR Holdings, LLC v. Hotels.com, L.P.
773 F.3d 1245 (Fed. Cir. 2014). Id. In DDR Holdings, the Court
evaluated the eligibility of claims "address[ing] the problem of retaining
website visitors that, if adhering to the routine, conventional functioning
of Internet hyperlink protocol, would be instantly transported away from
a host's website after 'clicking' on an advertisement and activating a
hyperlink." Id. at 1257. There, the Court found that the claims were patent
eligible because they transformed the manner in which a hyperlink
typically functions to resolve a problem that had no "pre-Internet
analog." Id. at 1258. The Court cautioned, however, "that not all claims
purporting to address Internet-centric challenges are eligible for patent."
Id. For example, in DDR Holdings the Court distinguished the patent-
eligible claims at issue from claims found patent-ineligible in
Ultramercial. See DDR Holdings, 773 F.3d at 1258-59 (citing
Ultramercial, 772 F.3d at 715-16). As noted there, the Ultramercial
claims were "directed to a specific method of advertising and content
distribution that was previously unknown and never employed on the
Internet before." Id. at 1258 (quoting Ultramercial, 772 F.3d at 715-
16). Nevertheless, those claims were patent ineligible because they
"merely recite[d] the abstract idea of 'offering media content in exchange
for viewing an advertisement,' along with 'routine additional steps such as
updating an activity log, requiring a request from the consumer to view the
ad, restrictions on public access, and use of the Internet."' Id.
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Appellant's asserted claims are analogous to claims found ineligible
in Ultramercial and distinct from claims found eligible in DDR Holdings.
The ineligible claims in Ultramercial recited "providing [a] media product
for sale at an Internet website"; "restricting general public access to said
media product"; "receiving from the consumer a request to view [a]
sponsor message"; and "if the sponsor message is an interactive message,
presenting at least one query to the consumer and allowing said consumer
access to said media product after receiving a response to said at least one
query." 772 F.3d at 712. Similarly, Appellant's asserted claims recite
receiving, analyzing, updating, and transmitting data. This is precisely the
type of Internet activity found ineligible in Ultramercial.
As to Appellant's argument that the claims "provides a way to execute
two separate purchases over two separate transaction networks so that the
end user has a seamless single-transaction experience," the claims only
provide conceptual advice to do so by any and all possible means absent any
technological details as to how this is done. Reply Br. 6
Claims 13, 14, 20, 21, 50, 56-63 and 69-71 rejected under 35 U.S.C.
§ 103(a) as unpatentable over Soestbergen, McMorris, Mueller
The issue most argued is whether McMorris has a priority document
earlier than the instant application's effective filing date that describes the
limitations regarding a purchase of both a product and carbon offsets. Only
two provision applications of McMorris (60/429,267, filed Nov 26, 2002,
and 60/440,069, filed Jan 13, 2003) have an earlier date. The Examiner cites
pages 10-11 of both of these documents. Ans. 17. We see nothing in these
pages, or in the remainder of the documents, that describes the limitation at
issue. Accordingly, we find the Appellant's argument persuasive.
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Claims 51-55 and 64-68 rejected under 35 U.S.C. § 103(a) as unpatentable
over Soestbergen, McMorris, Muellerr, and Barrett
These claims depend from the above claims and so the argument is
equally persuasive here.
CONCLUSIONS OF LAW
The rejection of claims 13, 14, 20, 21, and 50-71 under 35 U.S.C.
§ 112(a) as lacking a supporting written description within the original
disclosure is improper.
The rejection of claims 13, 14, 20, 21, and 50-71 under 35 U.S.C.
§ 101 as directed to a judicial exception without significantly more is proper.
The rejection of claims 13, 14, 20, 21, 50, 56-63 and 69-71 under
35 U.S.C. § 103(a) as unpatentable over Soestbergen, McMorris, Mueller is
improper.
The rejection of claims 51-55 and 64--68 under 35 U.S.C. § 103(a) as
unpatentable over Soestbergen, McMorris, Muellerr, and Barrett is
improper.
DECISION
The rejection of claims 13, 14, 20, 21, and 50-71 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). See 37 C.F.R.
§ 1.136(a)(l)(iv) (2011).
AFFIRMED
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