Ex Parte Joao

Patent Trial and Appeal Board

Feb 26, 2018

13134132 (P.T.A.B. Feb. 26, 2018)

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.
RJ367 2515
EXAMINER
CRAWLEY, TALIA F
ART UNIT PAPER NUMBER
3687
MAIL DATE DELIVERY MODE
13/134,132 05/31/2011
7590 02/26/2018
RAYMOND A. JOAO, ESQ.
122 BELLEVUE PLACE
YONKERS, NY 10703
Raymond Anthony Joao
02/26/2018 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 RAYMOND ANTHONY JO AO
Appeal 2016-007826
Application 13/134,132
Technology Center 3600
Before JOHN A. JEFFERY, JOYCE CRAIG, and
STEVEN M. AMUNDSON, Administrative Patent Judges.
JEFFERY, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision to reject claims 1—4, 6—11, and 18-44. We have jurisdiction under
35 U.S.C. § 6(b). We affirm.
STATEMENT OF THE CASE
Appellant’s invention fulfills subscriptions by enabling subscribers to
receive associated goods and services from providers at different
geographical locations, such as retail facilities or stores. See generally
Abstract; Spec. 1, 4—5, 41—44; Figs. 7A—B. Claim 1 is illustrative:
1. An apparatus, comprising:
a receiver, wherein the receiver receives a request to receive
or pick-up a good, a service, or a printed issue of a periodical, a
Appeal 2016-007826
Application 13/134,132
newspaper, or a magazine, at a retail facility or a store, or at a
location of a service provider, pursuant to a subscription;
a processing device, wherein the processing device
processes information regarding the request, wherein the
processing device determines whether the subscription is active
or not active or determines whether any good, any service, or
any issue or any issues of the periodical, the newspaper, or the
magazine, remain to be fulfilled pursuant to the subscription;
and
a transmitter, wherein the transmitter transmits a message in
response to the request, wherein the message contains an
authorization or a denial of the request, and further wherein the
message is transmitted to a transaction device or to a
communication device located at the retail facility or the store
or at the location of the service provider.
THE REJECTION
The Examiner rejected claims 1—4, 6—11, and 18-44 under 35 U.S.C.
§ 101 as directed to non-statutory subject matter. Final Act. 5.1
CONTENTIONS
The Examiner finds that the claims are directed to the abstract idea of
receiving and fulfilling subscriptions—a fundamental economic practice.
Final Act. 5. According to the Examiner, the additionally recited elements
amount to no more than mere instructions to implement the abstract idea on
a generic computer. Id.
Appellant argues that independent claim 1 is not directed to an
abstract idea, but rather a subscription for goods, products, and services that
1 Throughout this opinion, we refer to (1) the Final Rejection mailed March
24, 2015 (“Final Act.”); (2) the Appeal Brief filed September 12, 2015
(“Br.”); and (3) the Examiner’s Answer mailed June 9, 2016 (“Ans.”).
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Application 13/134,132
provides subscription fulfillment flexibility such that subscribers can receive
goods, products, and services from providers that may be at different
geographical locations. Br. 22—23. According to Appellant, claim 1
contains an inventive concept such that the claim is directed to an
application of the identified abstract idea by providing subscription
fulfillment flexibility. Br. 23—27. Appellant adds that claim 1 does not
preempt the identified abstract idea nor its field. Br. 27—28.
Appellant makes similar arguments regarding independent claim 18,
but adds that the recited apparatus facilitates creating or initiating a
subscription that provides flexibility in (1) the number or amounts of goods,
products, or services that can be provided pursuant to the subscription;
(2) the subscription’s time period or length; (3) the manner of the
subscription’s fulfillment; and (4) provider involvement in fulfilling the
subscription. Br. 28—35.
ISSUE
Has the Examiner erred in rejecting claims 1—4, 6—11, and 18 44 by
concluding that they are directed to ineligible subject matter under § 101?
This issue turns on whether the claimed invention is directed to a patent-
ineligible abstract idea and, if so, whether the claim’s elements—considered
individually and as an ordered combination—transform the nature of the
claim into a patent-eligible application of that abstract idea.
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Application 13/134,132
ANALYSIS
Claims 1—4, 6—11, 21—31, and 37—44
To determine whether claims are patent eligible under § 101, we apply
the Supreme Court’s two-step test articulated in Alice Corp. Pty. Ltd. v. CLS
Bank International, 134 S. Ct. 2347 (2014). First, we determine whether the
claims are directed to a patent-ineligible concept: laws of nature, natural
phenomena, and abstract ideas. Id. at 2354—55. If so, we then proceed to
the second step and examine the claim’s elements—both individually and as
an ordered combination—to determine whether the claim contains an
“inventive concept” sufficient to transform the claimed abstract idea into a
patent-eligible application. Id. at 2357.
Alice Step One
Applying Alice step one, we see no error in the Examiner’s finding
that claim 21 is directed to the abstract idea of receiving and fulfilling
subscriptions—a fundamental economic practice. Final Act. 5. Claim 1
recites, in pertinent part, a receiver that receives a request to receive or pick­
up a good, service, or printed issue of a periodical, newspaper, or magazine
at a retail facility or store, pursuant to a subscription. The claim further
recites a processing device that determines whether (1) the subscription is
active or inactive, or (2) any good, service or printed issues remain to be
fulfilled pursuant to the subscription. Lastly, claim 1 recites a transmitter
that transmits a message responsive to the request, where the message
(1) contains a request authorization or denial, and (2) is transmitted to a
transaction or communications device located at the retail facility, store, or
service provider’s location.
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Application 13/134,132
In essence, the claimed invention is directed to an apparatus that is
used to fulfill subscriptions according to an associated business relationship
which, as the Examiner indicates, can be contractual. See Ans. 3. We,
therefore, see no error in the Examiner’s finding that claim 1 is directed to
the abstract idea of receiving and fulfilling subscriptions—a fundamental
economic practice. Final Act. 5; Ans. 3^4.
That the claimed invention determines (1) the subscription’s status,
and (2) whether the received pick-up request is authorized or denied does
not change our conclusion, for these determinations are fundamental
business decisions that would be made to fulfill a subscription consistent
with its associated terms and conditions. Such fundamental economic and
business practices are often held to be abstract. See, e.g., Alice, 134 S. Ct.
at 2356 (holding the concept of intermediated settlement is an abstract idea
directed to a “fundamental economic practice long prevalent in our system
of commerce”) (citation omitted); see also buy SAFE v. Google, Inc.,
765 F.3d 1350, 1353—54 (Fed. Cir. 2014) (citing cases where contractual
relations at issue constituted fundamental economic practices, and noting
that forming or manipulating economic relations may involve an abstract
idea); Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat.
Assn, 776 F.3d 1343, 1347 (Fed. Cir. 2014) (explaining that claims directed
to “the mere formation and manipulation of economic relations” and “the
performance of certain financial transactions” have been held to involve
abstract ideas). Even assuming, without deciding, that the claimed invention
provides flexibility in fulfilling subscriptions as Appellant contends (Br. 22),
that does not change the fact that the claimed invention is, in essence,
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Application 13/134,132
directed to a fundamental business practice that facilitates fulfilling a
subscription consistent with its associated terms and conditions.
We, therefore, agree with the Examiner that claim 1 is directed to an
abstract idea.
Alice Step Two
Nor do the recited elements—considered individually and as an
ordered combination—transform the nature of claim 1 into a patent-eligible
application of the abstract idea to ensure that the claim amounts to
significantly more than that idea. See Alice, 134 S. Ct. at 2357.
That a receiver, processing device, and transmitter is used to this end
does not change our conclusion. First, sending and receiving data via a
transmitter and receiver (e.g., via a network) is conventional generic
computing functionality. See buySAFE, 765 F.3d at 1355 (“That a computer
receives and sends the information over a network—with no further
specification—is not even arguably inventive.”). Second, the recited
processing device is likewise a generic computing component that uses
conventional generic computing functions, such as comparing data stored in
databases, to make the recited determinations. Accord Ans. 3 (noting that
the request is compared with subscription information stored in a database to
determine whether the subscription is active and identify fulfillment
options).
Even assuming, without deciding, that the recited components add
efficiency, any speed increase comes from the capabilities of the generic
computer components—not the recited process itself. See FairWarning IP,
LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1095 (Fed. Cir. 2016) (citing
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Application 13/134,132
Bancorp Services, LLC v. Sun Life Assurance Co., 687 F.3d 1266, 1278
(Fed. Cir. 2012) (“[T]he fact that the required calculations could be
performed more efficiently via a computer does not materially alter the
patent eligibility of the claimed subject matter.”)). Like the claims in
FairWarning, the focus of claim 1 is not on an improvement in computer
processors as tools, but on certain independently abstract ideas that use
generic computing components as tools. See FairWarning, 839 F.3d at 1095
(citations and quotation marks omitted).
In short, merely reciting these generic computing components cannot
transform a patent-ineligible abstract idea into a patent-eligible invention.
Alice, 134 S. Ct. at 2358. In other words, merely reciting an abstract idea
while adding the words “apply it with a computer” does not render an
abstract idea non-abstract: there must be more. See id. at 2359. Nor does
the claimed invention improve the computer processor device’s functionality
or efficiency, or otherwise change the way that device functions. Cf. Enfish
LLCv. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016).
To the extent that Appellant contends that claim 1 recites a practical
application of the identified abstract idea by providing subscription
fulfillment flexibility (Br. 23—27), we disagree. To be sure, abstract ideas
can become eligible when reduced to some practical application. See In re
Alappat, 33 F.3d 1526, 1542 n.18 (Fed. Cir. 1994). But that is not the case
here, particularly given the recited fundamental business practice that
facilitates fulfilling a subscription consistent with its associated terms and
conditions, and its generic computing device implementation as noted
previously. That is, even assuming, without deciding, that the claimed
invention provides flexibility in fulfilling subscriptions as Appellant
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Application 13/134,132
contends (Br. 22), that does not change the fact that the claimed invention is,
in essence, directed to a fundamental business practice that facilitates
fulfilling a subscription consistent with its associated terms and conditions.
To the extent that Appellant contends otherwise (see Br. 22—27), we
disagree. A claim for a beneficial abstract idea is still an abstract idea. See
Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379—80
(Fed. Cir. 2015). For similar reasons, Appellant’s contention that claim 1
does not preempt the identified abstract idea or its field (Br. 27—28) is
likewise unavailing. For claims covering a patent-ineligible concept,
preemption concerns “are fully addressed and made moot” by an analysis
under the Alice framework. Id. at 1379.
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 1, and claims 2—4, 6—11, 21—31, and 37-44 not argued separately with
particularity.2
Claims 18—20 and 32—36
We also sustain the Examiner’s rejection of claim 18 reciting, in
pertinent part, an apparatus with a processing device that processes a request
to create or initiate a subscription, where the apparatus transmits a message
containing information regarding the created or initiated subscription to a
communications device or transaction device associated with a retail facility,
store, or service provider location.
2 Although Appellant nominally argues claims 21, 22, 24—31, and 37—44
separately (Br. 35—42, 49-62), Appellant reiterates arguments made for
claim 1. We, therefore, group these claims accordingly.
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Application 13/134,132
Our emphasis underscores that, unlike claim 1, claim 18 involves
creating or initiating a subscription. According to Appellant, the recited
apparatus functionality provides flexibility in (1) the number or amounts of
goods, products, or services that can be provided pursuant to the
subscription; (2) the subscription’s time period or length; (3) the manner of
the subscription’s fulfillment; and (4) provider involvement in fulfilling the
subscription. Br. 28—35.
Despite these contentions, we are not persuaded of error in the
Examiner’s rejection even assuming, without deciding, that the claimed
invention provides the above-noted flexibilities as Appellant contends. For
reasons similar to those indicated previously, we find that the claimed
invention is directed to an abstract idea, and the additional recited limitations
do not add significantly more to that abstract idea. In short, the above-noted
flexibilities do not change the fact that the claimed invention is, in essence,
directed to a fundamental business practice that facilitates initiating and
creating a subscription consistent with its associated terms and conditions.
Nor do we find that the claimed invention practically applies the abstract
idea to render it patent eligible. To the extent that Appellant contends
otherwise (see Br. 31—34), we disagree. For similar reasons, Appellant’s
contention that claim 18 does not preempt the abstract idea or its field
(Br. 34—35) is likewise unavailing.
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Application 13/134,132
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 18, and claims 19, 20, and 32—36, not argued separately with
particularity.3
CONCLUSION
The Examiner did not err in rejecting claims 1—4, 6—11, and 18-44
under § 101.
DECISION
We affirm the Examiner’s decision to reject claims 1—4, 6—11, and
18-44.
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
3 Although Appellant nominally argues claims 32—36 separately (Br. 42-49),
Appellant reiterates arguments made for claim 18. We, therefore, group
these claims accordingly.
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