Ex Parte Green et al

Patent Trial and Appeal Board

Sep 27, 2018

14137149 (P.T.A.B. Sep. 27, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/137,149 12/20/2013 Kris Green
919 7590 10/01/2018
PITNEY BOWES INC.
INTELLECTUAL PROPERTY & PROCUREMENT LAW DEPT.
37 EXECUTIVE DRIVE
MSC 01-152
DANBURY, CT 06810
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.
G-654 6983
EXAMINER
SHUI,MING
ART UNIT PAPER NUMBER
3684
NOTIFICATION DATE DELIVERY MODE
10/01/2018 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):
iptl@pb.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KRIS GREEN, AMIR-REZA DORAFSHAR, and BRIAN DHATT
Appeal2017-008270
Application 14/13 7, 149 1
Technology Center 3600
Before ST. JOHN COURTENAY III, MARC S. HOFF, and
DENISE M. POTHIER, Administrative Patent Judges.
HOFF, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from a Final Rejection of
claims 1-5, 7, and 9-20. 2 We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appellants' invention is a system and method for online shopping in
which an intelligent agent renders and updates domestic information relevant
to a first geographical location on a webpage, such that the updated
information is displayed on the display device as non-domestic information
relevant to a second geographical location. See Abstract.
1 The real party in interest is Borderfree, Inc. Br. 2.
2 Claims 6 and 8 have been cancelled.
Appeal2017-008270
Application 14/137,149
Claim 1 is exemplary of the claims on appeal:
A system for transforming information relevant to a first geographical
location that is displayed in a W ebpage into information relevant to a second
geographical location, the system comprising:
a data storage device for storing information that includes computer-
executable instructions for transforming information relevant to a first
geographical location that is displayed in a W ebpage into information
relevant to a second geographical location display device; and a processing
device for executing the computer-executable instructions, the processing
device including:
memory for storing information,
a user browser that is adapted to enable a user to search for products
and pricing information about products offered by at least one vendor server,
the vendor server adapted to operate a Website having a plurality of
deliverable W ebpages, at least one of the plurality of W ebpages having a
first primary coding and a second coding different from the first primary
coding, the second coding indicating information relevant to a first
geographical location, the user browser further adapted to detect the second
coding incorporated into the at least one of the plurality of deliverable
Webpages,and
an intelligent agent that is adapted to update the information relevant
to the first geographical location provided on the at least one of the plurality
of deliverable Webpages in response to detection of the second coding such
that the updated information is displayed on the display device as
information relevant to a second geographical location.
Claims 1-5, 7, and 9-20 stand rejected under 35 U.S.C. § 101 as
being directed to patent-ineligible subject matter.
Claims 1-5, 7, and 9-20 stand rejected under 35 U.S.C. § I02(a)(l) as
being anticipated by Lam et al., (US 2002/0120527 Al, published August
29, 2002) (hereinafter "Lam").
Throughout this decision, we make reference to the Appeal Brief
("Br.," filed November 21, 2016) and the Examiner's Answer ("Ans.,"
mailed December 27, 2016) for their respective details.
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Application 14/137,149
ISSUES
1. Is the claimed invention directed to a judicial exception,
specifically an abstract idea, without reciting significantly more that would
transform the invention into a patent-eligible application of the abstract
idea?
2. Does Lam teach "an intelligent agent that is adapted to update the
information relevant to the first geographical location provided on the at
least one of the plurality of deliverable Webpages in response to detection of
the second coding such that the updated information is displayed as
information relevant to a second geographical location"?
PRINCIPLES OF LAW
Under 35 U.S.C. § 101, a patent may be obtained for "any new and
useful process, machine, manufacture, or composition of matter, or any new
and useful improvement thereof." The Supreme Court has "long held that
this provision contains an important implicit exception: Laws of nature,
natural phenomena, and abstract ideas are not patentable." Alice Corp. Pty.
Ltd. v. CLS Bankint'l, 134 S. Ct. 2347, 2354 (2014) (quotingAss'nfor
Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)).
The Supreme Court in Alice reiterated the two-step framework previously
set forth in Mayo Collaborative Services v. Prometheus Laboratories, Inc.,
566 U.S. 66, 82-84 (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 that analysis is to determine whether the claims at
issue are directed to one of those patent-ineligible concepts, such as an
abstract idea. Abstract ideas may include, but are not limited to,
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Application 14/137,149
fundamental economic practices, methods of organizing human activities, an
idea of itself, and mathematical formulas or relationships. Id. at 2355-57.
If the claims are not directed to a patent-ineligible concept, the inquiry
ends. See Visual Memory LLC v. NVIDIA Corp., 867 F.3d 1253, 1262 (Fed.
Cir. 2017).
Otherwise, the inquiry proceeds to the second step in which the
elements of the claims are considered "individually and 'as an ordered
combination' to determine whether the additional elements 'transform the
nature of the claim' into a patent-eligible application." Alice, 134 S. Ct. at
2355 (quoting Mayo, 566 U.S. at 79, 78).
ANALYSIS
SECTION 101 REJECTION
ALICE STEP 2A-ABSTRACT IDEA
While the Examiner's statement of the abstract idea recited in the
claims as a "product search" is somewhat under-inclusive, the Examiner
correctly states what Appellants' Abstract admits. Final Act. 4. The
invention is directed to a system and method for online shopping (i.e.,
searching for a product and obtaining pricing for a product) in which
information relevant to a first geographical location (i.e., prices in a first
currency) is detected and the updated to information relevant to a second
geographical location (i.e., prices in a second currency). Abstract.
Contrary to Appellants' argument, we agree with the Examiner that
the claims are directed to the fundamental economic practices of currency
exchange and identifying a price for an item in a local currency. Ans. 3. We
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Application 14/137,149
agree with the Examiner's finding that these practices are well-known
business practices from the pre-Internet world. Id.
ALICE STEP 2B- INVENTIVE CONCEPT
We are not persuaded by Appellants' argument that the claims address
a business challenge that is particular to the Internet. Br. 5. We agree with
the Examiner that the updating of pricing on a web page to a different
currency is merely a longstanding business challenge adapted to the Internet.
See Ans. 3.
We are not persuaded by Appellants' analogy of the claims under
appeal to the claims in DDR Holdings, LLC v. Hotels.com L.P., 773 F.3d
1245 (Fed. Cir. 2014). Br. 5. The invention in DDR Holdings concerned
retaining a website visitor when the visitor clicked on a third-party
merchant's advertisement on the host website. Instead of taking the visitor
to the third-party merchant's website (and thus losing the visitor to the third-
party merchant), DDR 's claimed system generated a hybrid web page that:
(1) displayed product information from the third-party merchant, but also,
(2) retained the host website's "'look and feel."' DDR Holdings, 773 F.3d at
1248-1249. The Federal Circuit found that the invention was "necessarily
rooted in computer technology in order to overcome a problem specifically
arising in the realm of computer networks." Id. at 1257.
In contrast to the invention claimed in DDR Holdings, the invention
under appeal simply adapts the problem of currency exchange, and of
presenting prices in a second currency, to an Internet environment. The fact
that an "intelligent agent" performs the mathematics of currency conversion
on behalf of the user does not create an invention necessarily rooted in
computer technology, and the problem of "updat[ing] information ... [to]
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Application 14/137,149
information relevant to a second geographical location," i.e. to prices in the
currency of the second geographical location, is not a problem specifically
arising in the realm of computers or networks.
Because we find that the claimed invention recites an abstract idea
without significantly more, we sustain the Examiner's§ 101 rejection of
claims 1-5, 7, and 9-20.
SECTION 102 REJECTION
Independent claim 1 recites, inter alia,
an intelligent agent that is adapted to update the
information relevant to the first geographical location provided
on the at least one of the plurality of deliverable Webpages in
response to detection of the second coding such that the
updated information is displayed on the display device as
information relevant to a second geographical location.
Independent claim 13 recites an analogous method, including an analogous
limitation.
The Examiner finds that Lam teaches the claimed intelligent agent.
Final Act. 7. The Examiner cites disclosure in Lam to the effect that when a
customer has finished adding products to his basket, "a price quote request is
sent to the basket ... from the customer computer 20. An indication of the
basket's ... contents is generated and forwarded to the request sorter ....
[T]he request is received by the international shopping system 12 where a
quote is determined and sent back to the customer computer 20." Id., citing
Lam ,r 21.
In Lam, then, the updating of information relevant to the first
geographical location (prices in a first currency) to information relevant to
the second geographical location (prices in a second currency) takes place in
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response to a customer request for such updating. When a customer has
finished adding products to a basket for purchase, the customer triggers the
desired currency conversion process.
We find that Lam fails to teach updating, using an intelligent agent,
information relevant to a geographical location in response to detection of
second coding (as interpreted by the Examiner, the HTML content of web
pages in Lam that is directed to price information), as the claims require.
We note a software agent is an established term of art, as would have been
understood by programmers of ordinary skill in the art at the time of the
invention. The Examiner has not fully developed the record to show that
any express or inherent disclosure of an agent is necessarily present in Lam,
as required to show anticipation.
Consequently, we find that Lam fails to teach all the limitations of
independent claims 1 and 13. We do not sustain the Examiner's§ 102(a)(l)
rejection.
CONCLUSIONS
1. The claimed invention is directed to a judicial exception,
specifically an abstract idea, without reciting significantly more that would
transform the invention into a patent-eligible application of the abstract idea.
2. Lam does not teach an intelligent agent that is adapted to update
the information relevant to the first geographical location provided on the at
least one of the plurality of deliverable webpages in response to detection of
the second coding such that the updated information is displayed as
information relevant to a second geographical location.
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ORDER
The Examiner's decision to reject claims 1-5, 7, and 9-20 under
35 U.S.C. § 101 is affirmed. The Examiner's decision to reject claims 1-5,
7, and 9-20 under 35 U.S.C. § 102(a)(l) is reversed.
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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