Ex Parte Hills et al

Patent Trial and Appeal Board

Dec 8, 2017

13887253 (P.T.A.B. Dec. 8, 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.
13/887,253 05/03/2013 Benjamin G. HILLS 10587.0911-00000 6366
100692 7590
Oath Inc./Finnegan
901 New York Ave., NW
Washington, DC 20001
EXAMINER
DETWEILER, JAMES M
ART UNIT PAPER NUMBER
3621
NOTIFICATION DATE DELIVERY MODE
12/12/2017 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):
regional-desk @ finnegan. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BENJAMIN G. HILLS, UMESH S. CHHATRE,
GEORGE F. FLETCHER, and JOYCE R. CRUICKSHANK
Appeal 2016-003130
Application 13/887,2531
Technology Center 3600
Before ANTON W. FETTING, BRUCE T. WIEDER, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
WIEDER, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35U.S.C. § 134 from the
Examiner’s final rejection of claims 1—3, 5—17, and 19-28. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellants, the real party in interest is AOL Inc. (Appeal
Br. 1.)
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Application 13/887,253
CLAIMED SUBJECT MATTER
Appellants’ claimed invention “relates to systems and methods for
presenting, storing, bundling, sharing, and managing purchases of digital
services and/or other items (e.g., coupons, subscriptions, redeemable credits,
and exclusive discounts, etc.).” (Spec. 12.)
Claims 1 and 15 are the independent claims on appeal. Claim 1 is
illustrative. It recites:
1. A bundler system for bundling digital services, the bundler
system comprising:
at least one processor;
a memory device that stores a set of instructions which,
when executed by the at least one processor, causes the at least
one processor to:
store information related to a set of digital services,
the set of digital services being implemented by a plurality of
different service providers;
aggregate, based on the stored information, the set
of digital services into a bundle for a first user;
provide instructions to render a graphical user
interface at a device of the first user, the graphical user interface
providing the first user with an option to share one or more
services from the bundle of digital services with a second user;
receive, at the bundler system from the device of the
first user, a selected set of services to share with a second user,
including:
a first shared service of the bundled services
implemented by a first service provider of the plurality of
different service providers, and
a second shared service of the bundled
services implemented by a second service provider of the
plurality of different service providers;
generate, by the bundler system, a first sharing
token representing coded information identifying the first user,
the second user, the first shared service, and a status of the first
and second users;
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generate, by the bundler system, a second sharing
token representing coded information identifying the first user,
the second user, the second shared service, and a status of the
first and second users;
provide, by the bundler system to the first service
provider, the first sharing token to control access to the first
shared service by the second user; and
provide, by the bundler system to the second service
provider, the second sharing token to control access to the second
service by the second user.
REJECTIONS
Claims 1—3, 5—17, and 19-28 are rejected under 35 U.S.C. § 101 as
directed to non-statutory subject matter.
Claims 1—3, 5—10, 15—17, and 19—24 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Dutta (US 2011/0022453 Al, pub.
Jan. 27, 2011), Bertin (US 2011/0072496 Al, pub. Mar. 24, 2011), and
Jouret (US 2010/0299762 Al, pub. Nov. 25, 2010).
Claims 11 and 25 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Dutta, Bertin, Jouret, Kenny (US 2011/0010235 Al, pub.
Jan. 13, 2011), and Banerjee (US 2002/0188503 Al, pub. Dec. 12, 2002).
Claims 12 and 26 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Dutta, Bertin, Jouret, Kenny, Lovelace
(US 2012/0245994 Al, pub. Sept. 27, 2012), and Banerjee.
Claims 13, 14, 27, and 28 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Dutta, Bertin, Jouret, Kenny, Lovelace, Dobbins
(US 2008/0319857, pub. Dec. 25, 2008), Cricket Magazine “Transfer
Magazine Subscriptions” (archived Feb. 4, 2012),
https://web.archive.Org/web/20120204065845/https://www.cricketmag.com/
form/index.asp?nFormID=35 (last visited Dec. 1, 2017), Szeto
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(US 2006/0282386 Al, pub. Dec. 14, 2006), and Prasad (US 7,197,125 Bl,
iss. Mar. 27, 2007).
Claims 1—3 and 15—17 are provisionally rejected for nonstatutory
obviousness-type double patenting as being unpatentable over claims 1,3,4,
12, 14, and 15 of copending Application No. 13/887,258.
ANALYSIS
The §101 rejection
In 2014, the Supreme Court decided Alice Corp. Pty. Ltd. v. CLS Bank
Int’l, 134 S. Ct. 2347 (2014). Alice applies a two-part framework, earlier set
out in Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66
(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.
Under the two-part framework, it must first be determined if “the
claims at issue are directed to a patent-ineligible concept.” Id. If the claims
are determined to be directed to a patent-ineligible concept, then the second
part of the framework is applied to determine if “the elements of the
claim . . . contain[] an ‘inventive concept’ sufficient to ‘transform’ the
claimed abstract idea into a patent-eligible application.” Id. at 2357 (citing
Mayo, 566 U.S. at 72-73, 79).
With regard to part one of the Alice framework, the Examiner
determines that the claims
are directed to an abstract idea with additional generic computer
elements, the abstract idea being a series of steps instructing to
provide a first user with the ability to select a plurality of
available service they desire to consume, generally provide the
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user with access to the services, and enable the user to share
selected service(s) with a second user.
(Final Action 10—11.)
Appellants disagree and argue that “the claims do not recite an
abstract idea. They recite specific combinations involving computerized
techniques for bundling digital services.” (Appeal Br. 6.)2
Under part one of the Alice framework, we “look at the ‘focus of the
claimed advance over the prior art’ to determine if the claim’s ‘character as a
whole’ is directed to excluded subject matter.” Affinity Labs of Texas, LLC
v. DIRECTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016) (quoting Elec.
Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016)).
Thus, although we consider the claim as a whole, the “directed to” inquiry
focuses on the claim’s “character as a whole.”
The Specification provides evidence as to what the invention is
directed. In this case, the Specification discloses “systems and methods . . .
for aggregating and sharing digital services in bundles.” (Spec. 17.)
Claim 1 recites a “system for bundling digital services . . . comprising: . . .
instructions ... to: store information related to a set of digital services,”
“aggregate ... the set of digital services,” “render a graphical user interface
. . . providing the first user with an option to share one or more services,”
“receive ... a selected set of services to share with a second user,” “generate
... a first sharing token representing . . . information identifying the first
user, the second user, the first shared service, and a status of the first and
2 Unless otherwise indicated, references to “Appeal Br.” refer to the revised
Appeal Brief filed Sept. 18, 2015.
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second users,” “generate ... a second sharing token representing . . .
information identifying the first user, the second user, the second shared
service, and a status of the first and second users,” “provide ... to the first
service provider, the first sharing token,” “and provide ... to the second
service provider, the second sharing token.”
The Federal Circuit has found “[t]he process of receiving copyrighted
media, selecting an ad, offering the media in exchange for watching the
selected ad, displaying the ad, allowing the consumer access to the media,
and receiving payment from the sponsor of the ad all describe an abstract
idea.” Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014).
The Federal Circuit also found that “[ajdding 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 does not transform
an otherwise abstract idea into patent-eligible subject matter.” Id. at 716.
The focus of claim 1, as a whole, is on providing a first user with the
ability to select a plurality of available services, providing the user with
access to the services, and providing the user with the ability to share
selected services with a second user. We are not persuaded of a meaningful
distinction in the level of abstraction between the concept of offering media
to a consumer, requiring a request from the consumer to view the media, and
allowing the consumer access to the media in Ultramercial and the concept
of providing a first user with the ability to select a plurality of available
services and providing the user with access to the services. Nor are we
persuaded that providing information about a second user so as to provide
the second user access to some or all of the services, i.e., modifying
restrictions on access to the media, provides such a meaningful distinction.
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Therefore we are not persuaded that the Examiner erred in determining that
claim 1 is directed to an abstract idea.
Appellants also argue that the claims are not directed to an abstract
idea because “Appellant’s [sic] claims also do not ‘monopolize’ or
‘preempt’ all solutions for the asserted abstract idea.” (Appeal Br. 8.) We
are not persuaded of error. Preemption is not a separate test.
To be clear, the proper focus is not preemption per se, for some
measure of preemption is intrinsic in the statutory right granted
with every patent to exclude competitors, for a limited time, from
practicing the claimed invention. See 35 U.S.C. § 154. Rather,
the animating concern is that claims should not be coextensive
with a natural law, natural phenomenon, or abstract idea; a
patent-eligible claim must include one or more substantive
limitations that, in the words of the Supreme Court, add
“significantly more” to the basic principle, with the result that
the claim covers significantly less. See Mayo 132 S. Ct. at 1294
[566 U.S. at 72-73],
CLS Bank Inti v. Alice Corp. Pty. Ltd., 717 F.3d 1269, 1281 (Fed. Cir.
2013), affd, 134 S. Ct. 2347 (2014) (Fourie, J., concurring). Moreover,
“[w]here 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.” Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015).
In other words, “preemption may signal patent ineligible subject matter,
[but] the absence of complete preemption does not demonstrate patent
eligibility.” Id.
Appellants further argue that the present claims are “similar to the
patent-eligible e-commerce system at issue in DDR Holdings, LLC v.
Hotels.com, L.P.” (Appeal Br. 9.) Appellants argue that the “claims are
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necessarily rooted in computer technology and provide a technical solution
specifically arising in the realm of digital services.” (Id.) In particular,
Appellants argue that “claim 1 is directed to a computerized bundler system
that generates and provides a [sic] first and second sharing tokens for
bundled digital services.” (Id. at 10.) Unlike Appellants’ claims, the claims
in DDR Holdings “specify how interactions with the Internet are
manipulated to yield a desired result — a result that overrides the routine
and conventional sequence of events ordinarily triggered by the click of a
hyperlink.’ '’ DDR Holdings, LLCv. Hotels.com, L.P., 773 F.3d 1245, 1258
(Fed. Cir. 2014) (emphasis added). Appellants do not persuasively argue
how the present claims override a routine and conventional sequence of
events in, e.g., the processor.
Appellants further argue that “claim 1 addresses a technical problem
specifically arising in the realm of digital services: tracking digital service
users across multiple service providers given the increasing prevalence of
Do Not Track headers and similar privacy measures.” (Appeal Br. 10.)
However, Appellants do not point to any steps in claim 1 for tracking digital
service users across multiple service providers. Appellants’ argument is not
commensurate with the scope of the claim and, therefore, not persuasive of
error.
Part two of the Alice framework has been described “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, 134 S. Ct. at 2355
(citing Mayo, 566 U.S. at 72—73).
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The introduction of a computer into the claim does not alter the
analysis at step two.
[T]he 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 featur[e]” that provides any
“practical assurance that the process is more than a drafting effort
designed to monopolize the [abstract idea] itself.”
Id. at 2358 (citations omitted).
“[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.” Id. at 2359. They do not. Claim 1 relates to a method
for providing a user with the ability to select services, providing the user
with access to the services, and providing the user with the ability to share
selected services with another user.
Taking the claim elements separately, the function performed by the
processor at each step is purely conventional. Providing data for display
(services), receiving data (selected services), and generating data are basic
computer functions. Moreover, the Specification discloses that the invention
can be implemented using generic computer components. (See, e.g., Spec.
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1 88.) In short, each step does no more than require a generic computer to
perform generic computer functions.
Considered as an ordered combination, the computer components of
Appellants’ method add nothing that is not already present when the steps
are considered separately. The claims do not, for example, purport to
improve the functioning of the computer itself. Nor do they effect an
improvement in any other technology or technical field. Instead, the claims
at issue amount to nothing significantly more than an instruction to apply the
abstract idea of selecting services, providing access to the services, and
providing the user with the ability to share selected services using some
unspecified, generic computer. That is not enough to transform an abstract
idea into a patent-eligible invention. Alice, 134 S. Ct. at 2360.
Nonetheless, Appellants further argue that “Appellant’s [sic] claims
are novel and nonobvious over the prior art of record. This further
demonstrates that the claims recite ‘substantially more’ than a purported
abstract idea.” (Appeal Br. 13.) We are not persuaded of error. “The
‘novelty’ of any element or steps in a process, or even of the process itself, is
of no relevance in determining whether the subject matter of a claim falls
within the § 101 categories of possibly patentable subject matter.” Diamond
v. Diehr, 450 U.S. 175, 188-89 (1981).
In view of the above, we are not persuaded that the Examiner erred in
rejecting claim 1 under § 101. Appellants argue that “[independent claim
15 recites similar features to that noted above for claim 1 and similarly does
not recite the purported abstract idea.” (Appeal Br. 10.) For the reasons
discussed above, we are not persuaded that the Examiner erred in rejecting
claim 15 under § 101. Appellants also argue that “the Final Office Action
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and Advisory Action purport to address various requirements of independent
claim 1, but completely disregard the specific subject matter recited in
dependent claims 2—3, 5—14, 16—17, and 19—28.” (Id.) However, Appellants
do not explain what “specific subject matter” in the dependent claims would
transform the claims into patent-eligible subject matter. Therefore, we do
not find Appellants’ arguments regarding dependent claims 2, 3, 5—14, 16,
17, and 19—28 persuasive of error.
The f 103(a) rejection
Claim 1 recites, in relevant part, “generate ... a first sharing token
representing coded information identifying the first user, the second user, the
first shared service, and a status of the first and second users,” and “provide
. . . to the first service provider, the first sharing token.”
The Examiner finds that
Bertin teaches a “privileges server” / “certifying entity” that
stores an “item of information” which comprises the access
rights definition contained within a sharing invitation (e.g. at
least information identifying the first user, information
identifying a second user, information identifying the shared
service, and information identifying a status of the first and
second users), ft can also be seen that the “privileges server”
may provide the “item of information” [sic] (the “rights of
access”) to the service provider prior to or during an attempted
access of the second user to the service.
(Answer 20—21, emphasis omitted.)3
Appellants disagree and argue that “[w]hile the privileges server and
the services interact to determine the access rights of the second user, Bertin,
3 Unless otherwise indicated, references to “Answer” refer to the revised
Examiner’s Answer mailed Dec. 18, 2015.
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1 [0090], this interaction does not involve the privileges server providing the
services provider an item of information representing coded information
identifying ‘the second user’ and ‘a status of the . . . second user.”
(Reply Br. 11.)
Bertin discloses generating an invitation that a user may send to a
correspondent, inviting the correspondent to access at least one service. (See
Bertin 142.) Bertin further discloses that “a personal identifier specific to
the second user [correspondent] is associated with the generated invitation.”
(Id. 1 52.) “[Subsequently, the correspondents 102 are then able to invoke
(11) access to the data or services of the user 100 by producing the invitation
coupon” to the privileges server 103. (Id. 1 87; see also id. Fig. 1.) Thus,
Bertin discloses that the privileges server is provided with information
identifying the second user, i.e., the correspondent.
Bertin further discloses that “the privileges server 103 decides an
access control policy as a function of the invitation coupon, and returns (12)
an access authorization coupon with which the correspondent can
access (13) the service 104. (Id. 1 88.) “[T]he service 104 accessed by the
correspondent 102, then recovers (14) from the privileges server 103, on the
basis of the authorization coupon transmitted by the correspondent 102, the
rights of access to the service 104 which are authorized for the
correspondent 102.” (Id. 1 89.) In other words, the service 104 receives the
authorization coupon rather than the invitation coupon. Bertin clearly
discloses that “a personal identifier specific to the second user is associated
with the generated invitation” coupon. (Id. 1 52.) However, the Examiner
does not indicate where Bertin discloses that the authorization coupon
includes information identifying the second user as opposed to simply
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granting access to the entity presenting the authorization coupon to the
service.
Additionally, Bertin discloses that “the privileges server (certifying
entity) and the service(s) 104 interact (14) to determine the access rights of
the second user.” {Id. 190.) However, the Examiner does not indicate
where Bertin discloses that the privileges server provides the service 104
with information identifying the second user as opposed to simply access
rights for the entity presenting the authorization coupon to the service.
Therefore, we are persuaded that the Examiner erred in rejecting
claim 1 under § 103(a). Independent claim 15 contains similar language and
for similar reasons, we are persuaded that the Examiner erred in rejecting
claim 15, and dependent claims 2, 3, 5—14, 16, 17, and 19-28, under
§ 103(a).
Nonstatutorv obviousness-tvve double patenting rejection
The Examiner provides a detailed chart comparing claims 15, 16, and
17 of the application on appeal with claims 1,3, and 4 of application
13/887,258 (now Appeal No. 2016-002872). (See Final Action 8—9.)
Additionally, the Examiner finds that, “[wjith respect to [claims] 1—3 and
15—17, the primary difference between claims 1—3 and 15—17 of the instant
application and claims 1, 3, 4, 12, 14, and 15 of copending Application No.
13/887,258 is rearrangement of order of dependency.” {Id. at 10, emphasis
omitted.) The Examiner also finds that although claims 1 and 15 of the
instant application do not recite “a period of time during which access to the
selected at least one service to be shared by the second user is valid,” “prior
art reference Jouret discloses that it would have been obvious to one of
ordinary skill in the art at the time of invention to include a period of time
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during which access to the selected at least one service to be shared by the
second user is valid.” (Id.)
Appellants argue that “the pending claims are patentably distinct from
claims 1,3,4, 12, 14, and 15 of the ’258 application. This is at least because
the independent claims recite one or more patentably distinct elements.”
(Appeal Br. 19.) But Appellants do not identify what elements in the
pending claims are patentably distinct from those of claims 1,3,4, 12, 14,
and 15 of the ’258 application. Therefore, we do not find Appellants’
argument persuasive of error.
In the Reply Brief, Appellants argue “that given the architectural
dissimilarity between Jouret and Appellant’s [sic] claimed subject matter,
one of ordinary skill in the art would not be motivated to combine the
license token of Jouret with the subject matter of Appellant’s [sic] claims.”
(Reply Br. 13—14.) Appellants’ argument is responsive to the Examiner’s
obviousness determination in the Final Action. (See Final Action 10.) But
Appellants did not raise this argument in the Appeal Brief. Therefore, we
need not consider this argument here. See 37 C.F.R. § 41.37(a) (2015).
Regardless, if we did consider this argument, we would not find it
persuasive of error as Appellants do not explain what are the alleged
architectural dissimilarities between Jouret and the claimed subject matter
and why they would be relevant.
DECISION
The Examiner’s rejection of claims 1—3, 5—17, and 19-28 under
35 U.S.C. § 101 is affirmed.
The Examiner’s rejections of claims 1—3, 5—17, and 19-28 under
35 U.S.C. § 103(a) are reversed.
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The Examiner’s provisional rejection of claims 1—3 and 15—17 for
nonstatutory obviousness-type double patenting 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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