Ex Parte Huang et al

Patent Trials and Appeals Board

May 7, 2018

13747117 - (D) (P.T.A.B. May. 7, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
131747, 117 01122/2013
101373 7590 05/09/2018
Eversheds Sutherland (US) LLP I CEI
999 Peachtree Street
Suite 2300
Atlanta, GA 30309
FIRST NAMED INVENTOR
Grace Chu Huang
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.
26454-0083 3805
EXAMINER
REFAI, RAMSEY
ART UNIT PAPER NUMBER
3627
NOTIFICATION DATE DELIVERY MODE
05/09/2018 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):
patentdocket@eversheds-sutherland.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GRACE CHU HUANG, PAUL D. SIMS,
MATTHEW A. TRAPP, GREG CLAUD EASTERLY, JOE GEORGE,
ANNIE DUGUID, and KRISTA MARLATT 1
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Application 13/747, 117
Technology Center 3600
Before CAROLYN D. THOMAS, BRADLEY W. BAUMEISTER, and
JOSEPH P. LENTIVECH, Administrative Patent Judges.
THOMAS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner's Final Rejection of claims 1-30, all the pending claims in the
present application. See Claims Appendix. We have jurisdiction over the
appeal under 35 U.S.C. § 6(b ).
We AFFIRM.
1 Appellants name Manheim Investments, Inc. as the real party in interest
(App. Br. 1).
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The present invention relates generally to providing a dynamic, no-
questions-asked, money-back, item-return guarantee for item purchases. See
Abstract.
Claim 1 is illustrative:
1. A method for selling a vehicle in an online market
place, the method comprising:
determining, by at least one processor coupled to
at least one memory, information associated with the vehicle;
determining, by the at least one processor, online
marketplace activity information associated with a dealer;
receiving, by the at least one processor, a dealer
review or a dealer rating from a user computer on the online
marketplace;
receiving, by the at least one processor, a dealer
attribute from at least one service provider computer;
determining, by the at least one processor, market
data associated with a transaction involving the vehicle;
determining, by the at least one processor, a risk
profile for the transaction in the online marketplace involving
the vehicle between a buyer-dealer and a seller-dealer, and the
risk profile being based at least in part on at least two of the
information associated with the vehicle, the online marketplace
activity information associated with the dealer, the dealer
review, the dealer attribute, or the market data associated with
the transaction involving the vehicle; and
determining, by the at least one processor and
based at least in part on the risk profile, a guarantee acquisition
fee for the transaction involving the vehicle.
Appellants appeal the following rejections:
RI. Claims 1-30 are rejected under 35 U.S.C. § 101 because the
claimed invention is directed to non-statutory subject matter (Final Act. 5);
and
R2. Claims 1-3 are rejected under 35 U.S.C. § 112(a) or 35 U.S.C.
§ 112 (pre-AIA), first paragraph, as failing to comply with the written
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description requirement (Final Act. 6).
We review the appealed rejections for error based upon the issues
identified by Appellants, and in light of the arguments and evidence
produced thereon. Ex parte Frye, 94 USPQ2d 1072, 107 5 (BP AI 2010)
(precedential).
ANALYSIS
Rejection under§ 1 OJ
Issue 1: Did the Examiner err in finding that the claims are directed
to non-statutory subject matter?
Alice Corp. Proprietary Ltd. v. CLS Bank International, 134 S. Ct.
2347 (2014) identifies a two-step framework for determining whether
claimed subject matter is judicially-excepted from patent eligibility under
§ 101.
According to Alice step one, "[w]e must first determine whether the
claims at issue are directed to a patent-ineligible concept," such as an
abstract idea. Alice, 134 S. Ct. at 2355.
In this regard, with respect to independent method claims 1 and 30,
and similarly, non-transitory computer-readable media claim 4 and system
claim 7, the Examiner finds that the claims are directed to an abstract idea
(Final Act. 3, 5). The Examiner adds that the claims are "similar to the
concepts of collecting and comparing known information, obtaining and
comparing intangible data, comparing new and stored information and using
rules to identify options" (Ans. 5).
Appellants challenge said findings on three grounds: (a) the Office
Action fails to provide evidentiary support; (b) the Office Action
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collectively rejects the claims with little to no analysis; and ( c) the claimed
invention improves the existing technological process of buying and selling
items online and is directed to specific computer technology.
Regarding argument (a), Appellants contend that the "Office Action
fails to provide any evidentiary support for the allegation that the claims are
directed to any abstract idea" (App. Br. 5, citing Ex parte Poisson).
Although Appellants highlight a previous Board decision for the proposition
"absent supporting evidence in the record - of which there is none, the
Examiner's opinion is an inadequate finding of fact on which to base the
Alice analysis" (see App. Br. 5, citing Ex parte Renald Poisson, Appeal No.
2012-011084 (PTAB Feb. 27, 2015), as a matter of course, what a different
panel of the Board determined in a different situation under a different set of
facts has little bearing on how this case should be disposed of.
While we do not consider Ex parte Renald Poisson controlling, that
Panel's consideration of evidence in making a determination under the first
step of the Alice framework has merit. A similar approach was taken in
Apple, Inc. v. Ameranth, Inc., 843 F.3d 1229 (Fed. Cir. 2016). But these
cases do not stand for the proposition that examiners must provide
evidentiary support in every case before a conclusion can be made that a
claim is directed to an abstract idea. There is no such requirement. See, e.g.,
para. IV "July 2015 Update: Subject Matter Eligibility" to 2014 Interim
Guidance on Subject Matter Eligibility (2014 IEG), 79 Fed. Reg. 74618
(Dec. 16, 2014) ("The courts consider the determination of whether a claim
is eligible (which involves identifying whether an exception such as an
abstract idea is being claimed) to be a question of law. Accordingly, courts
do not rely on evidence that a claimed concept is a judicial exception, and in
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most cases resolve the ultimate legal conclusion on eligibility without
making any factual findings" (emphasis added)). Evidence may be helpful
in certain situations where, for instance, facts are in dispute. But such
evidence is not always necessary.
In any case, the Examiner highlighted some previously denoted
abstract concepts, i.e., "collecting and comparing known information,
obtaining and comparing intangible data, comparing new and stored
information and using rules to identify options, managing an insurance
policy, creating a contractual relationship, and an algorithm for calculating
parameters indicating an abnormal condition" (Ans. 5). The Examiner's
cogent analysis relying on judicial examples (id.), albeit without specifically
citing the specific cases, shows the Examiner provided adequate basis for
making the rejection.
Here, claim 1 recites seven steps: ( 1) determining information
associated with a vehicle; (2) determining online marketplace activity
information associated with a dealer; (3) receiving a dealer review/rating;
( 4) receiving a dealer attribute; ( 5) determining market data associated with
a transaction; ( 6) determining a risk profile for the transaction; and
(7) determining a guarantee acquisition fee for the transaction. These seven
steps present a scheme for calculating an item-return guarantee for items
purchased.
Information collection and analysis, including when limited to
particular content, is within the realm of abstract ideas. See, e.g., Elec.
Power Grp. LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016)
(holding that "collecting information, analyzing it, and displaying certain
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results of the collection and analysis" are "a familiar class of claims
'directed to' a patent-ineligible concept").
Additionally, 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 v. Kappas, 130 S. Ct. 3218 (2010),
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).
Because the claims are directed to determining information, collecting
information, analyzing it, and providing a guarantee, we agree with the
Examiner that claim 1 is directed to an abstract idea.
Regarding argument (b ), Appellants contend "the Office Action
collectively rejects claims 1-30 with little to no analysis ... [only]
conclusory statements ... [but] failing to apply the foregoing two-step
inquiry, and related analysis, on a claim-by-claim basis" (App. Br. 6).
Although Appellants contend that the Examiner "oversimplifies the
claims without addressing each element" (id. at 7), we find that the
Examiner properly and reasonably found that claim 1 is similar to
"collecting and comparing known information ... using rules to identify
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options ... creating a contractual relationship" (Ans. 5), to name a few
examples previously shown to be an abstract idea.
Under the first step of the Alice framework, "[ w ]e must first determine
whether the claims at issue are directed to a patent-ineligible concept," such
as an abstract idea. Alice, 134 S. Ct. at 2355. We find that the Examiner has
performed a sufficient analysis under Alice's first step. Whichever way the
concept is described, Appellants have not adequately rebutted the
Examiner's determination that claim 1 is directed to an abstract idea. Just
because the claim includes more words than the phrase the Examiner uses as
an articulation of the abstract idea to which he/she found the claim to be
directed to, that fact is an insufficient reason to persuasively argue that claim
1 is not directed to an abstract idea.
Regarding argument ( c ), Appellants contend that "the claims at issue
in the present application improve the existing technological process of
buying and selling items (such as vehicles) online ... by providing a
dynamic item return guarantee to the buyer ... similar to the patents-at-issue
in the Federal Circuit panel decision in DDR Holdings" (App. Br. 7-8). We
disagree with Appellants.
In DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1259
(Fed. Cir. 2014), the subject claim was held patent-eligible because it
encompassed "an inventive concept" for resolving a "particular Internet-
centric problem." In contrast, Appellants' claimed methods do not provide a
solution "necessarily rooted in computer technology in order to overcome a
problem specifically arising in the realm of computer networks." DDR, 773
F.3d at 1257. Appellants' claims merely recite using at least one processor
coupled to at least one memory to provide a method for item-return
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guarantee for items purchased (see claim 1 ). Because the claims on appeal
merely use a generic computer or processor as a tool that is used in the way
a computer normally functions, we conclude claims 1-30 fail to impart any
discernible improvement upon that computer or processor.
Nor do Appellants' claims solve "a challenge particular to the
Internet" as considered by the court in DDR, 773 F.3d at 1256-57. Thus,
none of Appellants' claims are like the claim held patent-eligible by the
court in DDR, in which the claimed invention was directed to the "challenge
of retaining control over the attention of the customer in the context of the
Internet" (id. at 1258), such that:
Instead of the computer network operating in its normal,
expected manner by sending the website visitor to the third-
party website that appears to be connected with the clicked
advertisement, the claimed system generates and directs the
visitor to the above-described hybrid web page that presents
product information from the third-party and visual "look and
feel" elements from the host website.
DDR, 773 F.3d at 1258-59.
Thus, we find unavailing Appellants' arguments that the claims are
"similar to the patents-at-issue in the Federal Circuit panel decision in DDR
Holdings" (App. Br. 8), given that no convincing "inventive concept" for
resolving a "particular Internet-centric problem" is identified by Appellants.
We instead agree with the Examiner that "nothing in the claims seems to
improve the functioning of the computer itself' (Ans. 4).
We now tum to the second step of the Alice framework: "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
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(citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct.
1289, 1294) (2012).
Appellants contend that "the fact that the Office Action indicates that
the claims are allowable over the prior art is proof that the claims amount to
significantly more than an abstract idea" (App. Br. 10). This argument is
unpersuasive. The Examiner finds, and we agree, that "[t]he claims do not
include additional elements that are sufficient to amount to significantly
more ... because they are merely an abstract idea with additional generic
computer elements" (Ans. 5).
Furthermore, we highlight that the determination of patentability
under § 101 is separate from the determination under § § 102 and 103. See
Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1315 (Fed.
Cir. 2016). Indeed, "[t]he '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." Diamondv. Diehr, 450 U.S. 175, 188-89 (1981)
(emphasis added); see also Mayo, 132 S. Ct. at 1303-04 (rejecting "the
Government's invitation to substitute§§ 102, 103, and 112 inquiries for the
better established inquiry under § 101 "). Here, the jury's general finding
that Symantec did not prove by clear and convincing evidence that three
particular prior art references do not disclose all the limitations of or render
obvious the asserted claims does not resolve the question of whether the
claims embody an inventive concept at the second step of Mayo/Alice.
Additionally, as recognized by the Supreme Court, "the mere
recitation of a generic computer cannot transform a patent-ineligible abstract
idea into a patent-eligible invention." See Alice, 134 S. Ct. at 2359
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(concluding claims "simply instruct[ing] the practitioner to implement the
abstract idea of intermediated settlement on a generic computer" not patent
eligible); see also Ultramercial v. Hulu, 772 F.3d 709, 715-16 (Fed. Cir.
2014) (claims merely reciting abstract idea of using advertising as currency
as applied to particular technological environment of the Internet not patent
eligible); Accenture Global Servs., GmbH v. Guidewire Software, Inc., 728
F.3d 1336, 1344--45 (Fed. Cir. 2013) (claims reciting "generalized software
components arranged to implement an abstract concept [of generating
insurance-policy-related tasks based on rules to be completed upon the
occurrence of an event] on a computer" not patent eligible); and
Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1333-34 (Fed. Cir. 2012)
("[s]imply adding a 'computer aided' limitation to a claim covering an
abstract concept, without more, is insufficient to render [a] claim patent
eligible").
Because Appellants' independent claims 1, 4, 7, and 302 are directed
to a patent-ineligible abstract concept under the first prong of the Alice
analysis, and because they do not recite something "significantly more"
under the second prong of the Alice analysis, we sustain the Examiner's
rejection of these claims, as well as respective dependent claims 2, 3, 5, 6,
and 8-29, under 35 U.S.C. § 101 as being directed to non-statutory subject
matter in light of Alice and its' progeny.
For the foregoing reasons, Appellants' contentions are unpersuasive
as to error in the rejection under 35 U.S.C. § 101.
2 Alice also confirmed that if a patent's systems claims are no different in
substance from its method claims, they will rise and fall together. 134 S. Ct.
at 2360. The same was true of the patent's media claims in Alice. Id.
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Objection to Drawings
The Examiner objects to the drawings for not containing the same
subject matter raised in the§ 112 rejection il1fra (see Final Act 4).
Ordinarily, an objection is a petitionab1e matter-unlike a rejection,
which is appealable to the Board. \Vhen the issue of new matter is the
subject of both an objection and a rejection, though, the issue is appealable.
See MPEP § 2163.06(II). In this case, the objection to the drawings and the
§ 112 rejection of claims 1----3 tum on the same issue of whether the ''newly
introduced" claimed subject matter finds adequate support in the original
disclosure (Ans. 2----3). As such, we will decide both the objection and the
rejection.
Rejection under§ 112 and Objection to Drawings
Issue 2: Did the Examiner err in finding that the claims contain
subject matter that was not described sufficiently in the disclosure, including
the drawings, as originally filed?
Appellants contend that "[t]he current claims are almost identical to
those as filed other than being amended to include the term 'online
marketplace'" (App. Br. 3), "which [is] implicit in the original claims and is
supported throughout the specification" (id. at 4, citing Figs. 1-3 and
corresponding description). We agree with Appellants.
To satisfy the written description requirement, the disclosure must
reasonably convey to skilled artisans that Appellants possessed the claimed
invention as of the filing date. Ariad Pharms., Inc. v. Eli Lilly & Co., 598
F.3d 1336, 1351 (Fed. Cir. 2010) (en bane). However, the written
description requirement under § 112 does not demand ( 1) any particular
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form of disclosure, or (2) that the Specification recites the claimed invention
verbatim. Ariad, 598 F.3d at 1352 (citations omitted). As stated in Ex parte
Parks, adequate written description "does not require literal support for the
claimed invention." Ex parte Parks, 30 USPQ2d 1234, 1236 (BPAI 1993).
"Rather, it is sufficient if the originally-filed disclosure would have
conveyed to one having ordinary skill in the art that an appellant had
possession of the concept of what is claimed." Id. Stated differently, it is
not necessary that Appellants use the exact words of the claim, e.g., "online
marketplace." In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990) ("These
elements must be arranged as in the claim under review, but this is not an
'ipsissimis verb is' test" (citations omitted)).
Here, we find that Appellants' originally-filed disclosure clearly
conveyed an "online marketplace" in at least the components illustrated in
Fig. 1, the descriptions in paragraph [2], and in the Abstract.
For example, as depicted in Appellants' Figure 1, "one or more users
102 (e.g., vehicle dealers) may utilize computing devices 014(1), ... , 104(N)
to access a client application interface (or website) 106 ... associated with a
service provider via one or more networks 108" (Spec. i-f 25; see also id. at
Fig. 1) and "receive, from the service provider computers 110 over the
networks 108, information associated with one or more vehicles 112"
(id. i-f 26). Furthermore, Appellants' disclosure states that "a buyer-dealer
may access a marketplace platform and search for a particular item to
purchase" (id. at Abstract), and that "Buyers and sellers today typically
utilize some form of an online marketplace platform ... there is a continuing
need to provide confidence between buyers and sellers as they conduct
business over the platform" (id. i-f 2).
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In other words, Appellants' Specification describes their invention as
a mechanism for using a computing device to access the website of a vehicle
dealer to obtain merchandise information, i.e., accessing an "online
marketplace."
Therefore, we disagree with the Examiner that "the claims were
amended to include new features that appear to be new matter" (Ans. 2)
(emphasis added), given that said amendment merely included the addition
of the phrase "online marketplace," which was clearly illustrated in the
original Specification in at least the Abstract, in Figure 1, and in the
descriptions of the inventions.
As for the Examiner's conclusion that "one skilled in the art would
not be able to ascertain the metes and bounds of what this limitation [is]"
(Ans. 3 (emphasis added)), we find here the Examiner is conflating
"indefiniteness" with "new matter" because the latter merely requires that
the disclosure reasonably convey to skilled artisans that Appellants
possessed the claimed invention as of the filing date, which we find they did.
Accordingly, we reverse the Examiner's § 112 rejection of claims 1-3
and the objection to the drawings based on new matter.
DECISION
We affirm the Examiner's§ 101 rejection of claims 1-30.
We reverse the Examiner's§ 112 rejection of claims 1-3 and the
objection to the drawings.
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).
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AFFIRMED
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