Ex Parte Geppert et al

Patent Trial and Appeal Board

May 24, 2017

12194336 (P.T.A.B. May. 24, 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.
12/194,336 08/19/2008 Birgit Andrea Geppert 4366-877 6437
48500 7590 05/26/2017
SHERIDAN ROSS P.C.
1560 BROADWAY, SUITE 1200
DENVER, CO 80202
EXAMINER
REAGAN, JAMES A
ART UNIT PAPER NUMBER
3621
NOTIFICATION DATE DELIVERY MODE
05/26/2017 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
following e-mail address(es):
cjacquet@ sheridanross.com
pair_Avay a @ firsttofile. com
edocket @ sheridanross .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BIRGIT ANDREA GEPPERT, REINHARD PETER KLEMM,
and FRANK MICHAEL ROESSLER
Appeal 2015-007749
Application 12/194,336
Technology Center 3600
Before BIBHU R. MOHANTY, BRADLEY B. BAYAT, and
AMEE A. SHAH, Administrative Patent Judges.
MOHANTY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants seek our review under 35 U.S.C. § 134 of the final
rejection of claims 1—4, 6—8, 10-15, 19, 20, 22, and 23 which are all the
claims pending in the application. We have jurisdiction under 35 U.S.C.
§ 6(b).
SUMMARY OF THE DECISION
We AFFIRM.
Appeal 2015-007749
Application 12/194,336
THE INVENTION
The Appellants’ claimed invention is directed to method of
communication between customers of a retail website (Spec., para. 4).
Claim 1, reproduced below, is representative of the subject matter on appeal.
1. A method comprising:
providing, by a server via a processor, an online portal to a first
customer and a second customer;
receiving, via the processor, a first indication of selection of a
first item via the online portal by the first customer;
receiving, via the processor, a second indication of selection of
a second item via the online portal by the second customer, wherein
the selection of the second item by the second customer is made
independently from the selection of the first item by the first
customer;
receiving, via the processor, a third indication that the second
customer is concurrently viewing a web page via the online portal at a
time that the first customer is viewing the web page;
conducting, via the processor and based on the first indication
and the second indication, a similarity analysis between the first item
and the second item, to yield a similarity analysis result; and
based on the similarity analysis result and via the processor:
displaying to the first customer, on the web page, a fourth
indication comprising (i) an identification of the second
customer, (ii) a first notification that the second customer has
selected a similar item for purchase independently from the first
customer, and (iii) a second notification that the second
customer is currently viewing the web page; and
establishing, via the online portal, an electronic
communication between the first customer and the second
customer.
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Appeal 2015-007749
Application 12/194,336
THE REJECTION
The following rejection is before us for review:
Claims 1—4, 6—8, 10-15, 19, 20, 22, and 23 are rejected under 35
U.S.C. § 101 as being directed to non-statutory subject matter.
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 evidence1.
ANALYSIS
The Appellants argue that the rejection of claim 1 under 35 U.S.C.
§ 101 is improper because the claim is not directed to an abstract idea or
fundamental economic practice, but rather instead rooted in technology
(App. Br. 10-14). The Appellants also argue that the limitations in the claim
amount to “significantly more” than an abstract idea and do not preempt
every application of the idea (App. Br. 14—17).
In contrast, the Examiner has determined that the rejection is proper
(Ans. 3—7).
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,
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 2015-007749
Application 12/194,336
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).
In judging whether claim 1 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 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, we find that the claim is directed to the concept of grouping and
matching buyers of common items and letting them communicate with each
other. This is essentially a method of organizing human activities in a
marketplace. This is also a fundamental economic practice long prevalent in
our system of commerce, and is an abstract idea beyond the scope of § 101.
Buyers of similar items have been previously organized into common groups
and, for example, been sent similar product catalogs, sent to similar trading
pits to execute trades, and directed to common chat rooms about similar
products where communication can take place. The Appellants have argued
that the elements of the claim are “rooted in technology” (App. Br. 12, 13),
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Appeal 2015-007749
Application 12/194,336
but we disagree. Here, the claim is rooted instead to the concept of grouping
and matching buyers of common items and letting them communicate with
each other and is an abstract idea beyond the scope of § 101. Note also that
it has been held that “[a]n abstract idea can generally be described at
different levels of abstraction. . . . The Board’s slight revision of its abstract
idea analysis does not impact the patentability analysis.” Apple, Inc. v.
Ameranth, Inc., 842 F.3d 1229, 1241 (Fed. Cir. 2016).
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 using generic computer components. We conclude that it does
not.
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 computer has a processor, memory, operating system,
and components known to those skilled in the art”. Spec. para. 12). Each
step of the claimed method does no more than require a generic computer to
perform a generic computer function. Here, the claimed elements require
only using a generic server, processor, online portal, and web page, and the
recitation of these elements fails to transform the abstract nature of the
claim.
We note the point about pre-emption. (App. Br. 15, 16) 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.,
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Appeal 2015-007749
Application 12/194,336
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. 701193 (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.”).
For these above reasons the rejection of claim 1 is sustained. The
Appellants have provided the same arguments for the remaining claims and
the rejection of these claims is sustained as well.
CONCLUSIONS OF LAW
We conclude that the Appellants have not shown that the Examiner
erred in rejecting claims 1—4, 6—8, 10-15, 19, 20, 22, and 23 under 35 U.S.C.
§101.
DECISION
The Examiner’s rejection of claims 1—4, 6—8, 10-15, 19, 20, 22, and
23 is sustained.
AFFIRMED
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