Ex Parte Fries

Patent Trial and Appeal Board

Apr 19, 2018

13670146 (P.T.A.B. Apr. 19, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/670,146 11/06/2012 Kevin Patrick Fries
49845 7590 04/23/2018
SCHWEGMAN LUNDBERG & WOESSNER/EBAY
P.O. BOX 2938
MINNEAPOLIS, MN 55402
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.
2043.B75US 1 1070
EXAMINER
CIVAN,ETHAND
ART UNIT PAPER NUMBER
3684
NOTIFICATION DATE DELIVERY MODE
04/23/2018 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):
USPTO@SLWIP.COM
SLW@blackhillsip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KEVIN PA TRICK FRIES
Appeal 2016-008429
Application 13/670,146 1
Technology Center 3600
Before BRADLEY W. BAUMEISTER, JASON V. MORGAN, and
DAVID J. CUTITTA II, Administrative Patent Judges.
CUTITTA, Administrative Patent Judge.
DECISION ON APPEAL
Appellant seeks our review under 35 U.S.C. § 134(a) of the
Examiner's decision rejecting claims 1-20, which are all the claims pending
in the application. We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
1 Appellant identifies the Real Party in Interest as eBay Inc. See Appeal
Br. 2.
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Application 13/670, 146
STATEMENT OF THE CASE
Invention
Appellant's invention relates to providing transient local commerce
search capabilities. Spec. i-f 1. 2 Namely, a user is provided with an indicator
of a location of one or more merchants that offer a product for sale within a
user-specified location and during a user-specified time period, such as a
food truck. See Spec. Abstract.
Exemplary Claim
Claims 1, 13, and 20 are independent. Claim 1 is exemplary and is
reproduced below.
1. A method comprising:
receiving information from a client device, the
information identifying a product and including a user specified
location and a user specified time period, the information being
specified via a user interface presented on the client device;
obtaining, from one or more networked databases, location
data identifying a temporary location of one or more merchants
having the product available for sale;
obtaining, from the one or more networked databases,
temporal data indicating a time when the product is available at
the temporary location of the one or more merchants;
determining, using one or more processors, that the
product is available within the user specified location and during
the user specified time period based on the location data and the
temporal data; and
2 Throughout this Decision, we refer to: (1) Appellant's Specification, filed
November 6, 2012 ("Spec."); (2) the Final Office Action ("Final Act."),
mailed May 12, 2015; (3) the Appeal Brief filed December 30, 2015
("Appeal Br."); (4) the Examiner's Answer ("Ans."), mailed July 22, 2016;
and (5) the Reply Brief (Reply Br.) filed September 7, 2016.
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providing display data to display an indicator of a location
of at least one of the one or more merchants, the at least one of
the one or more merchants providing the product within the user
specified location and during the user specified time period.
Appeal Br. 26.
REJECTION
Claims 1-20 stand rejected under 35 U.S.C. § 101 as directed to non-
patentable subject matter. Final Act. 2-4.
CONTENTIONS AND ANALYSIS
Issue: Whether the Examiner properly rejects the claims under
35 U.S.C. § 101 as being directed to non-patentable subject matter?
Appellant argues the claims as a group. See Appeal Br. 8, 13. We
select independent claim 1 as exemplary of Appellant's arguments for
claims 1-20. See 37 C.F.R. § 41.37(c)(l)(iv) (2015).
The Examiner determines claim 1 is directed to a fundamental
economic practice and, thus, an abstract idea. See Final Act. 3; Ans. 11.
The Examiner also determines the claim does not include additional claim
elements sufficient to "provide meaningful limitations to transform the
abstract idea into a patent eligible application of the abstract idea such that
the claims amount to significantly more than the abstract idea itself." Final
Act. 2-3.
Appellant presents several arguments against the § 101 rejection. We
do not find Appellant's arguments persuasive. Instead, the Examiner has
provided a comprehensive response to Appellant's arguments supported by a
preponderance of evidence. See Ans. 2-13. Thus, we adopt the Examiner's
findings and conclusions. See Final Act. 2--4; Ans. 2-13.
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Section 101 provides that "[ w ]hoever invents or discovers any new
and useful process, machine, manufacture, or composition of matter, or any
new and useful improvement thereof, may obtain a patent therefor, subject to
the conditions and requirements of this title." 35 U.S.C. § 101. The
provision, however, "'contains an important implicit exception: "Laws of
nature, natural phenomena, and abstract ideas are not patentable." Alice
Corp. Pty. Ltd. v. CLS Bank Int 'l, 134 S. Ct. 2347, 2354 (2014) (quoting
Assoc. for Molecular Pathology v. Myriad Genetics, Inc., 133 S. Ct. 2107,
2116 (2013) ). The "abstract ideas" category embodies the longstanding rule
that an idea, by itself, is not patentable. Alice, 134 S. Ct. at 2355 (quoting
Gottschalkv. Benson, 409 U.S. 63, 67 (1972)).
In Alice, the Supreme Court sets forth an analytical "framework for
distinguishing patents that claim laws of nature, natural phenomena, and
abstract ideas from those that claim patent-eligible applications of those
concepts." 134 S. Ct. at 2355 (citing Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 132 S. Ct. 1289, 1296-97 (2012)). The first step in
the analysis is to "determine whether the claims at issue are directed to one
of those patent-ineligible concepts," such as an abstract idea. Alice, 134 S.
Ct. at 2355.
If the claims are directed to a patent-ineligible concept, the second
step in the analysis is to consider the elements of the claims "individually
and 'as an ordered combination"' to determine whether there are additional
elements that "'transform the nature of the claim' into a patent-eligible
application." Id. (quoting Mayo, 132 S. Ct. at 1298, 1297). In other words,
the second step is to "search for an 'inventive concept'-i.e., an element or
combination of elements that is 'sufficient to ensure that the patent in
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practice amounts to significantly more than a patent upon the [ineligible
concept] itself."' Alice, 134 S. Ct. at 2355 (brackets in original) (quoting
Mayo, 132 S. Ct. at 1294). The prohibition against patenting an abstract idea
'"cannot be circumvented by attempting to limit the use of the [abstract idea]
to a particular technological environment' or adding 'insignificant
postsolution activity."' Bilski v. Kappas, 561 U.S. 593, 610-11 (2010)
(quoting Diamond v. Diehr, 450 U.S. 175, 191-92 (1981)).
Initially, independent claim 1 recites steps for a method. As such,
claim 1 is directed to a statutory class of invention within 35 U.S.C. § 101.
Turning to the first step of the Alice inquiry, we must determine whether
claim 1, being directed to a statutory class of invention, nonetheless falls
within a judicial exception. We agree with the Examiner that Appellant's
claim 1 is directed to "a fundamental economic practice." Final Act. 3.
Such activities fit squarely within the realm of abstract ideas.
Providing data indicating whether merchants are available to provide
a product for sale at a specified location and time is a fundamental business
practice long prevalent in our system of commerce, like the risk hedging in
Bilski (see Bilski, 561 U.S. at 593), intermediated settlement in Alice (see
Alice, 134 S. Ct. at 2356-57), offer-based price optimization in OIP (see
OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362 (Fed. Cir.
2015)), verifying credit card transactions in CyberSource (see CyberSource
Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1370 (Fed. Cir. 2011)),
collecting and analyzing information to detect and notify of misuses in
FairWarning (see FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089,
1093-94 (Fed. Cir. 2016)), and guaranteeing of transactions in buySAFE
(see buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1354 (Fed. Cir. 2014).
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Providing availability data for merchants is also a building block of a market
economy.
Thus, "providing display data to display an indicator of a location of
at least one of the one or more merchants," like risk hedging and
intermediated settlement, may be characterized as an "abstract idea" beyond
the scope of§ 101. See Alice 134 S. Ct. at 2356. Accordingly, we are
unpersuaded by Appellant that the "claims at issue are not directed to a
fundamental economic practice." Appeal Br. 15-16.
Regardless, however, of whether the claims are directed to a
fundamental economic practice, we also agree with the Examiner that
Appellant's claim 1 is abstract because a "claim directed to organizing,
storing, and transmitting information is directed to an idea itself." Ans. 10
(citing Cyberfone Sys., LLC v. CNN Interactive Grp., 558 Fed. Appx. 988
(Fed. Cir. 2014) (non-precedential)).
The decision in Electric Power Group v. Alstom also is instructive
because the claims in that case related to "real-time performance monitoring
of an electric power grid by collecting data from multiple data sources,
analyzing the data, and displaying the results." Elec. Power Grp., LLC v.
Alstom S.A., 830 F.3d 1350, 1351 (Fed. Cir. 2016). Specifically, the claims
recited ( 1) receiving input data regarding the power grid, other power system
data sources, and non-grid data sources; (2) "detecting and analyzing events
in real-time from the plurality of data streams" based on measurements
specifically related to power, including "dynamic stability metrics";
(3) "displaying the event analysis results and diagnoses of events and
associated ones of the metrics ... in visuals, tables, charts, or combinations
thereof," including "tracking data" or "historical data"; and (4) "deriving a
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composite indicator of reliability." Id. at 1351-52. Here, like the claims in
Elec. Power Grp., the "focus of the asserted claims ... is on collecting
information, analyzing it, and displaying certain results of the collection and
analysis," and is accordingly directed to an abstract idea. Elec. Power Grp.,
830 F.3d at 1354; see also Content Extraction & Transmission LLC v. Wells
Fargo Bank, Nat'! Ass 'n, 776 F.3d 1343, 1347 (Fed. Cir. 2014) ("The
concept of data collection, recognition, and storage is undisputedly well-
known. Indeed, humans have always performed these functions.").
Appellant argues claim 1 solves "a technological problem in
conventional industry practice" because in contrast with the claimed
solution, "users that utilize ... conventional practices to locate merchants
offering products at a specific time and place often cause increased network
congestion due to the numerous requests they cause to be transmitted to
servers." Appeal Br. 18 (citing Diamond v. Diehr, 450 U.S. 175 (1981)).
The Examiner disagrees, noting "Diehr involved a physical transformation
with respect to the process of curing rubber, a factor that is lacking in the
present claims. Moreover, the problem of locating temporary merchants can
be solved in other ways than by using appellant's technology." Ans. 12. We
agree with the Examiner and thus find Appellant's argument unpersuasive.
Appellant argues claim 1 is not abstract because it "focus[ es] on a
specific asserted improvement in computer capabilities, particularly, in the
capability to locate transient merchants," like the invention discussed in
Enfzsh. Reply Br. 15 (citing Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327
(Fed. Cir. 2016).
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This argument is unpersuasive because claim 1, here, is unlike the
claims in Enfzsh. There, our reviewing court relied on the distinction made
in Alice between, on one hand, computer-functionality improvements and,
on the other, uses of existing computers as tools in aid of processes focused
on "abstract ideas" (in Alice, as in so many other § 101 cases, the abstract
ideas being the creation and manipulation of legal obligations such as
contracts involved in fundamental economic practices). Enfzsh, 822 F.3d at
1335-36; see also Alice, 134 S. Ct. at 2358-59. In Enfzsh, the decision to
reject the § 101 challenge was applied at stage one because the claims at
issue focused, not on asserted advances in uses to which existing computer
capabilities could be put, but on a specific improvement-a particular
database technique-in how computers could carry out one of their basic
functions of storage and retrieval of data. Enfzsh, 822 F.3d at 1335-36.
The present case is different because the focus of claim 1 is not on an
improvement in computer-functionality, as in Enfzsh, but on independently
abstract ideas that use a computer as a tool, i.e., to collect, analyze, and
display merchant information; namely, receiving a query from a client
identifying a product and including a user specified location and a user
specified time period and displaying a location of merchants that provide the
product within the user specified location and during the user specified time
period.
"We need not define the outer limits of 'abstract idea,' or at this stage
exclude the possibility that any particular inventive means are to be found
somewhere in the claim, to conclude that claim 1 focuses on an abstract
idea-and hence the issue requires stage-two analysis under § 101." Elec.
Power Grp., 830 F.3d at 1353.
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Turning to the second step of the Alice inquiry, Appellant argues
"there is no analysis showing that the Examiner actually considered the
ordered combination recited in the claims" and "[ w ]hen considered as an
ordered combination, the elements of the claims at issue include something
more." Appeal Br. 19-20 (emphasis removed).
We are unpersuaded because the Examiner does consider the claim as
an ordered combination. See Ans. 5-7. Additionally, nothing in Appellant's
claim 1 adds "significantly more," sufficient to transform the abstract
concept of collecting, analyzing, and displaying information into a patent-
eligible application. See Alice, 134 S. Ct. at 2357.
Merely collecting, analyzing, and displaying information does nothing
significant to differentiate a process from ordinary mental processes, whose
implicit exclusion from § 101 underpins the information-based category of
abstract ideas. See Elec. Power Grp., 830 F.3d at 1355. Claim 1 does not
require a new source or type of information, or a new technique for
analyzing it. Id. Consequently, claim 1 does not require an arguably
inventive set of components or methods, such as measurement devices or
techniques, that would generate new data. Id.
Moreover, the claim does not invoke any assertedly inventive
programming. Merely manipulating data for storage or display by itself
does not transform the otherwise-abstract processes of information
collection and analysis. See Elec. Power Grp., 830 F.3d at 1355;
FairWarning, 839 F.3d at 1097.
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Thus, for the same reasons as Electric Power Group and
FairWarning, Appellant's claim 1 is also directed to nothing significantly
more than the underlying abstract idea and, therefore, is ineligible under
§ 101.
Moreover, nothing in claim 1, understood in light of the Specification,
requires anything other than off-the-shelf, conventional computer
technology for extracting, analyzing, and displaying the desired data. See
Spec. i-f 46 ("The processor 510 may be any of a variety of different types of
commercially available processors suitable for mobile devices"); See also
Spec. i-f 19 (discussing client device 170). Our reviewing court has
repeatedly held that 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. buySAFE, Inc, 765 F.3d at 1353,
1355; see, e.g., Intellectual Ventures I LLC v. Capital One Bank (USA), 792
F.3d 1363, 1370 (Fed. Cir. 2015).
Appellant argues there is no ''per se excluded category of subject
matter." Appeal Br. 17.
We do not disagree. Nevertheless, there is no "inventive concept" in
Appellant's use of a generic computer processor to perform well-understood,
routine, and conventional activities commonly used in industry. See Alice,
134 S. Ct. at 2359.
Appellant argues "the claims at issue in this case are not mental
steps[,] and they do not fail the machine-or-transformation test." Reply
Br. 7.
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To the extent Appellant argues the claim is patent eligible because it
satisfies the transformation prong of the machine-or transformation test set
forth in Bilski, i.e., that there is a transformation of a particular article to a
different state, we note that the alleged "transformation" in claim 1 from a
client device input to "display data to display an indicator of a location of at
least one of the one or more merchants" is merely a manipulation of data,
which is not sufficient to meet the transformation prong under § 101. See
Gottschalk, 409 U.S. at 71-72. (a computer-based algorithm that merely
transforms data from one form to another is not patent-eligible).
Appellant argues claim 1 "would not preempt the making, using, and
selling of basic tools of scientific and technological work." Appeal Br. 22
(emphasis removed). We agree with the Examiner, however, that absence of
preemption is not the test. Ans. 13 ("the test for whether claims are statutory
is not preemption, but rather the Mayo two step test"). "While preemption
may signal patent ineligible subject matter, the absence of complete
preemption does not demonstrate patent eligibility." Ariosa Diagnostics,
Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015). "Where a
patent's claims are deemed only to disclose patent ineligible subject matter
under the Mayo framework, as they are in this case, preemption concerns are
fully addressed and made moot." Id.
Appellant argues "[l]ike the claims in DDR Holdings, the claims at
issue are rooted in computer technology in order to overcome a problem
specifically arising in a particular computer realm." Appeal Br. 23
(emphasis removed) (citing DDR Holdings, LLC v. Hotels.com, L.P., 773
F.3d 1245, 1257 (Fed. Cir. 2014) (finding an inventive concept in the
modification of the conventional mechanics behind website display to
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produce a dual-source integrated hybrid display). Appellant further argues
that consistent with DDR Holdings, "the claims at issue solve a
technological problem in conventional industry practice of network
communication (e.g., increased congestion in network communication)."
Appeal Br. 23.
We disagree. The solution offered by Appellant's claim 1 is not
rooted in any novel computer technology, as evidenced by claim 1 's
recitation of a generic processor. Rather, Appellant's Specification
identifies a problem that conventional "websites are limited to providing
search results for only those merchants with a permanent physical location
and operating during specified period of operation." Spec. i-f 2. Appellant's
claimed invention seeks to solve the identified problem by "provid[ing]
transient local commerce search capabilities." Spec. i-f 1.
This problem is a business problem, not a technical problem. Claim 1
recites a specific way and specific context for obtaining and displaying
relevant product information in response to a user query- namely, by
obtaining location and temporal data for merchants offering the product for
sale and displaying a location of the merchants providing the product within
the user specified location and during the user specified time period. See
claim 1, Spec., Fig. 4. While these steps limit the scope of the abstract idea,
the limitations are not sufficient to transform Appellant's otherwise patent-
ineligible abstract idea into patent-eligible subject matter. Fundamentally,
the solution Appellant offers is "an entrepreneurial, rather than a
technological, one." DDR, 773 F.3d at 1265 (Mayer, J., dissenting).
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Because Appellant's representative claim 1 is directed to a patent-
ineligible abstract concept and does not recite something "significantly
more" under the second prong of the Alice analysis, we sustain the
Examiner's rejection of this claim under 35 U.S.C. § 101 as being directed
to non-patentable subject matter in light of Alice and its progeny. The
rejection of claims 2-20, which are not argued separately, is sustained for
the same reasons.
DECISION
We affirm the Examiner's rejection 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) (1) (iv).
AFFIRMED
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