Ex Parte Gautam et al

Patent Trial and Appeal Board

Sep 27, 2018

13759599 (P.T.A.B. Sep. 27, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/759,599 02/05/2013
122427 7590 09/27/2018
W ALMART APOLLO LLC
C/0 Schmeiser, Olsen & Watts LLP
33 Boston Post Road West
Suite 410
Marlborough, MA 01752
FIRST NAMED INVENTOR
Ajay Kumar Gautam
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.
WMT-008 (166US01) 3188
EXAMINER
GOLDBERG, IV AN R
ART UNIT PAPER NUMBER
3624
MAIL DATE DELIVERY MODE
09/27/2018 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte AJAY KUMAR GAUTAM, MADHU GAUTAM,
SUY ASH KOTP ALLIW AR, and VIVEK SHARMA
Appeal2017-005018
Application 13/759,599
Technology Center 3600
Before ALLEN R. MacDONALD, CARLA M. KRIVAK, and
PHILLIP A. BENNETT, Administrative Patent Judges.
KRIVAK, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-5 and 7-20. We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
1 Appellant identifies Wal-Mart Stores Inc., as the real party in interest.
Appeal Br. 3.
Appeal2017-005018
Application 13/759,599
STATEMENT OF THE CASE
Appellants' invention is directed to "systems and methods for online
appointment scheduling." Spec. ,r 1.
Independent claim 1, reproduced below, is exemplary of the subject
matter on appeal.
1. A computer-implemented method for online
appointment scheduling, comprising:
searching, at a central online application of a main
website of a retail establishment presented at an electronic
display, for a store location of a plurality of store locations,
wherein the plurality of store locations are part of the retail
establishment that presents information related to the store
locations from the central online application of the main
website of the retail establishment, wherein contents of the
central online application are viewable at the electronic display,
wherein the store location includes a computer that
outputs the information to the main website, and wherein the
main website of the retail establishment is linked to the
computer at the store location for receiving the information
from the store location;
processing registration data of a user searching for the
store location;
storing the registration data at a storage device;
selecting, at the central online application of the
electronic display, the store location from the plurality of store
locations;
processing, by an appointment scheduler executed by a
special purpose computer, in communication with the central
online application, an appointment
scheduling request for an appointment at a service of a
sub-entity of the selected store location that is displayed among
the contents of the central online application viewable at the
electronic display;
generating a response to the appointment scheduling
request;
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Application 13/759,599
wherein in response to a rejection of the appointment
scheduling request:
selecting at the central online application of the
electronic display a different store location;
transferring the stored registration data to a computer at
the different store location; and
processing by the appointment scheduler another
appointment scheduling request for a service of a sub-entity of
the selected different store location.
REFERENCES and REJECTIONS
The Examiner rejected claims 1-5 and 7-20 under 35 U.S.C. § 112(a)
or 35 U.S.C. § 112 (pre-AIA), first paragraph, as failing to comply with the
written description requirement.
The Examiner rejected claims 1-5 and 7-20 under 35 U.S.C. § 101 as
directed to an abstract idea.
The Examiner rejected claims 1-5, 7-12, and 14--20 under 35 U.S.C.
§ I03(a) based upon the teachings ofNessland (US 2008/0313005 Al; Dec.
18, 2008) and Grunspan (US 7,676,391 Bl; Mar. 9, 2010).
The Examiner rejected claims 1-5, 7-12, and 14--20 under 35 U.S.C.
§ I03(a) based upon the teachings ofNessland, Grunspan and Carlson (US
2004/0102983 Al; May 27, 2004).
The Examiner rejected claims 13 under 35 U.S.C. § I03(a) based
upon the teachings ofNessland, Grunspan, Carlson, and Tam (US 7,188,073
Bl; Mar. 6, 2007).
ANALYSIS
35 USC§ 112 (a)
The Examiner finds Appellants' claim 1 recitation "wherein in
response to a rejection of the appointment scheduling request: transferring
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Application 13/759,599
the stored registration data to a computer at the different store location" is
not supported by Appellants' Specification because:
there is no description that provides for how one of ordinary skill
in the art would practice the instant invention with a conventional
or novel algorithm or technique. Without an explanation in the
specification or the claims of how this determination is made,
Applicant has not shown that they were in possession of the
claimed invention
Final Act. 6. Thus, the Examiner finds, Appellants' paragraph 48
states "the registration information can be stored. However, there is
no disclosure of 'transferring' the stored registration data, let alone
transferring to a different store 'in response to a rejection."' Id.
Appellants contend the Examiner errs in finding paragraphs 33 and 48
of the Specification do not "infer that a computer at a store, for example,
store website 36A, may retrieve registration data from a database" as does
Figure 2. App. Br. 9. Appellants further contend the Specification,
paragraphs 34 and 54, and Figures 3-5, support the limitation "in response
to a rejection of the appointment scheduling request" a different store
location is selected at the central online application. App. Br. 9-10.
Therefore, Appellants contend, an ordinarily skilled artisan would
understand that registration information made on a user computer may be
exchanged, via a main website, with other location websites. Id. We do not
agree.
We agree with the Examiner there is no disclosure in either paragraph
33 nor 48, or the Figures "that discusses or even hints at the registration data
being transferred between stores upon receiving a rejection." Ans. 2. See
MPEP 2163 II(3 )(a) "It is not enough for the patentee simply to state or later
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argue that persons of ordinary skill in the art would know what structures to
use to accomplish the claimed function." Atmel Corp. v. Information Storage
Devices, Inc., 198 F.3d 1374, 1380 (Fed. Cir. 1999); Biomedino, LLC v.
Waters Technologies Corp., 490 F.3d 946, 953 (Fed. Cir. 2007) ("The
inquiry is whether one of skill in the art would understand the specification
itself to disclose a structure, not simply whether that person would be
capable of implementing a structure.").
Therefore, we agree with the Examiner the claim limitation "wherein
in response to a rejection of the appointment scheduling request: selecting at
the central online application of the electronic display a different store
location" is not supported by Appellants' Specification.
35 USC§ 101
In Alice Corp. Pty. Ltd. v. CLS Bank International, 134 S. Ct. 2347
(2014 ), the Supreme Court reiterates an analytical two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66, 79 (2012), "for distinguishing patents that
claim laws of nature, natural phenomena, and abstract ideas from those that
claim patent-eligible applications of those concepts." Alice, 134 S. Ct. at
2355. 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. Id. 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. (citing Mayo, 566 U.S. at 79, 78). In other
words, the second step is to "search for an 'inventive concept'-i.e., an
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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."' Id. ( citing Mayo, 566 U.S. at 72-73).
The Examiner finds claims 1-5 and 7-20 are "directed to a judicial
exception (i.e., an abstract idea) without reciting significantly more." See
Final Act. 8-20.
As to the first step of the Alice inquiry, Appellants contend the
Examiner errs in finding independent claims 1, 17, and 20 are directed to an
abstract idea. App. Br. 11-12. That is, Appellants assert claim 1 is directed
to a process, claim 1 7 includes hardware such as special purpose computers,
and claim 20 is directed to a computer program product, which are all
statutory categories. App. Br. 12.
We are not persuaded by Appellants' arguments. We agree with and
adopt the Examiner's findings as our own. Ans. 2-13. We emphasize the
following. As correctly recognized by the Examiner, Appellants' misapplied
Enfzsh2 in that there is nothing in Enfzsh that "presents a test that allows just
the recitation of a 'computer' or 'online' in the preamble to make the claim
eligible." Ans. 6. Further, Appellants' argument that because the claims are
directed to a "computer-implemented appointment scheduling" the claim is
not abstract is also unpersuasive. Id. We agree with the Examiner
Appellants' claims use a computer for scheduling appointments, however,
this could be accomplished by other means, say a person calling a list of
customers, therefore, the claimed invention is not "rooted in computer
technology" and is similar to calling on a telephone (human activity). Ans.
2 Enfzsh, LLC, v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016).
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7; Final Act. 8-9. Appellants' claims simply use a computer to implement
an abstract idea similar to one previously identified in Electric Power
Group. 3 The scheduling of appointments is an abstract idea which uses a
computer as a tool to implement it. Ans. 6-7. As the Federal Circuit has
concluded, "a process defined simply as using a computer to perform a
series of mental steps that people, aware of each step, can and regularly do
perform in their heads" is considered an abstract idea. SmartGene, Inc. v.
Advanced Biological Laboratories, SA, 555 F.Appx. 950, 954 (Fed. Cir.
2014 ). That is, mental processes can be unpatentable even when automated
to reduce the burden on the user of what once could have been done with
pen and paper. 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."4).
Appellants' reliance on SiRF Tech. 5 is also misplaced. App. Br. 16-
17. As an initial matter, this case was decided prior to Alice, and applied the
"machine or transformation" test that was found insufficient for determining
eligibility in Alice. Even so, the claims in SiRF Tech. bear little resemblance
to those at issue here, as they relate to solving the technological problem of
calculating an absolute position of a GPS receiver and an absolute time of
reception of satellite signals. Id. at 1333. (See Ans. 8-9).
3 Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir.
2016).
4 Gottschalkv. Benson, 409 U.S. 63 (1972).
5 SiRF Technology, Inc. v. International Trade Com'n, 601 F.3d 1319 (Fed,
Cir. 2010).
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We also agree with the Examiner that Appellants have not
substantively addressed the rejection. Ans. 7. Therefore, we agree with the
Examiner Appellants' claims are directed to an abstract idea.
As to the second step of Alice, Appellants assert the claims recite
something significantly more because the claims require a network of
computers and the stated functions in the claims cannot be performed
without hardware such as special purpose computers and a network/internet
there between. App. Br. 15-16. Appellants further assert the claims include
special-purpose computers that "perform functions in a unique manner for
reducing customer wait time." App. Br. 18. Appellants do not explain what
the special purpose computers are or the unique manner in which they
perform the claimed functions, which are similar to those performed using
pen and paper. Appellants also have not stated what solution the claims
provide to overcoming a specific problem arising in computer networks,
other than there being a lack of centralized schedulers at websites ( of which
no substantial evidence of this has been provided-" problems solved by
Appellants' claimed scheduler do not apply to pen-and-paper schedulers,
only to internet websites"). App. Br. 19. "[ A ]fter Alice, there can remain no
doubt: recitation of generic computer limitations does not make an otherwise
ineligible claim patent-eligible." DDR Holdings, LLC v. Hotels.com, L.P.,
773 F.3d 1245, 1257 (Fed. Cir. 2014) (citing Alice, 134 S.Ct. at 2358)). We
further note Appellants' Specification merely states the "computer program
instructions may be provided to a processor of a general purpose computer,
special purpose computer, or other programmable data processing
apparatus" without identifying what the special purpose computer is capable
of performing that the general purpose computer cannot also perform. Spec.
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,r 63. Appellants also state the claims include special purpose hardware,
which one would understand is a ROM. App. Br. 28. We note there is no
special purpose hardware in the claims and a ROM is a conventional piece
of computer hardware. Thus we agree with the Examiner's findings that the
claims, taken as a whole do not provide "significantly more" than an abstract
idea.
Accordingly, in light of the above, claims 1-5, and 7-20 amount to
nothing more than an attempt to patent the abstract idea embodied in the
steps of the claims. See Alice, 134 S.Ct. at 2355 (quoting Mayo, 566 U.S. at
78). We therefore agree with the Examiner's analysis and find Appellant's
arguments insufficient to show error and sustain the Examiner's 35 U.S.C.
§ 101 rejection
35 us.c. § 103
The Examiner finds N essland teaches all the limitations of
independent claims 1, 17, and 20, except for explicitly disclosing an
appointment scheduler, relying on Grunspan for this teaching. Final Act.
20-29.
Appellants acknowledge the Examiner relies on Grunspan for
disclosing an appointment scheduler. App. Br. 30. Appellants then assert
Grunspans' scheduler permits scheduling of a service at a particular
department of a specific remote store of a retail establishment. App. Br. 31.
Appellants further contend, Nessland's scheduler is not a central on-line
application, but merely for a local store. App. Br. 32. Thus, applying
Grunspans' scheduler to N essland would result in scheduling at a "single
enterprise" and not multiple store locations. Id. Appellants then assert
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Grunspan would therefore require "substantial reconstruction and redesign."
App, Br. 31-32. We do not agree.
We agree with and adopt the Examiner's findings. Final Act. 20-61;
Ans. 14--23. We address certain arguments and findings for emphasis.
Specifically, we agree with the Examiner Grunspan was cited only for
"explicitly disclosing a 'scheduler"' (as Nessland implicitly discloses a
scheduler). Ans. 16. Further, "Nessland discloses dealing with different
locations," and not merely a "single enterprise" as Appellants assert. Ans.
16-17; Nessland ,r,r 180, 158, 123, 132. Appellants also appear to be
arguing the reference separately (App, Br. 31) and not for what the
combined teachings of the references would have suggested to an ordinarily
skilled artisan. Ans. 17; see In re Keller, 642 F.2d 413 (CCPA 1981).
Therefore, we agree it would have been obvious to incorporate the scheduler
of Grunspan into Nessland.
We further agree with the Examiner, contrary to Appellants'
assertions (App. Br. 31-32; Reply Br, 9-11 ), Nessland's paragraph 122 and
Figure 1 teach the data center is central and paragraph 119 states that "a
preferred embodiment of the present invention is hosted at a central data
center." Ans. 15; Final Act. 21-22.
Appellants then contends the Examiner errs in rejecting claims 1-5,
7-12, and 14--20 as obvious over Nessland, Grunspan, and Carlson. App.
Br. 34--35. We do not agree. The Examiner made reasonable findings
supported by evidence that we agree with and adopt, which Appellants do
not address. Ans. 22; Final Act. 56-58.
Appellants separately argue claim 13, which states "determining
whether a person submitting the appointment scheduling request to the
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appointment scheduler is a new user" and "generating a new user
registration screen in response to a determination that the person submitting
the appointment scheduling request." App. Br. 40-41. Appellants contend
Tam does teach a new registration screen, but does not mention "the
exchange of registration data." App. Br. 36. We do not agree.
We agree with and adopt the Examiner's reasonable findings
supported by evidence, which Appellants do not address, as our own. Final
Act. 58---61; Ans. 19--21, 22-23.
For the above reasons, we are not persuaded of Examiner error. We
find the weight of the evidence supports the Examiner's ultimate legal
conclusion of obviousness, and therefore sustain the Examiner's rejection of
claims 1-5 and 7-20.
DECISION
The Examiner's decision rejecting claims 1-5 and 7-20 under 35
U.S.C. § 112(a) is affirmed.
The Examiner's decision rejecting claims 1-5 and 7-20 under 35
U.S.C. § 101 is affirmed.
The Examiner's decision rejecting claims 1-5 and 7-20 under 35
U.S.C. § 103 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)(l )(iv).
AFFIRMED
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