Ex Parte Khanna et al

Patent Trials and Appeals Board

Aug 21, 2018

12776937 - (D) (P.T.A.B. Aug. 21, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/776,937 05/10/2010 Shikha Khanna
49845 7590 08/23/2018
SCHWEGMAN LUNDBERG & WOESSNER/EBAY
P.O. BOX 2938
MINNEAPOLIS, MN 55402
UNITED ST A TES OF AMERICA
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.
2043.779US 1 3359
EXAMINER
DUNHAM, JASON B
ART UNIT PAPER NUMBER
3684
NOTIFICATION DATE DELIVERY MODE
08/23/2018 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):
USPTO@SLWIP.COM
SLW@blackhillsip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SHIKHA KHANNA and NICOLE LEE BIRDSALL
Appeal2017-005197
Application 12/776,937 1
Technology Center 3600
Before HUBERT C. LORIN, NINA L. MEDLOCK, and
BRADLEY B. BAY AT, Administrative Patent Judges.
LORIN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Shikha Khanna and Nicole Lee Birdsall (Appellants) seek our review
under 35 U.S.C. § 134(a) of the Final Rejection of claims 1-20. We have
jurisdiction under 35 U.S.C. § 6(b ).
SUMMARY OF DECISION
We AFFIRM.
1 The Appellants identify eBay Inc., as the real party in interest. Appeal
Br. 2.
Appeal2017-005197
Application 12/776,937
THE INVENTION
Claim 10, reproduced below, is illustrative of the subject matter on
appeal.
10. A method comprising:
storing a posting for an item in an online publication
system, the posting submitted by a first user;
retrieving a stored inquiry comprising a predetermined
question about the posting, the stored inquiry added to the
posting when the posting was submitted by the first user; and
selectively retrieving, using one or more processors and
in response to an inquiry received from a second user, a
response from a response source, the retrieved response
comprising an answer to the stored inquiry, the answer based on
at least a portion of the posting submitted by the first user.
THE REJECTIONS 2
The following rejection is before us for review:
Claims 1-20 are rejected under 35 U.S.C. § 101 as being directed to
judicially-excepted subject matter.
Claims 4, 5, 13, and 14 are rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which the applicants regard as the
invention.
Claims 1-20 are rejected under 35 U.S.C. § I02(b) as being
anticipated by Hamilton, II et al. (US 2009/0112683 Al, pub. Apr. 30, 2009)
("Hamilton").
2 The Examiner withdrew the rejection of claims 8 and 17 under 35 U.S.C.
§ 112, second paragraph (Advisory Action mailed July 7, 2015).
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ISSUE
Did the Examiner err in rejecting claims 1-20 under 35 U.S.C. § 101
as being directed to judicially-excepted subject matter?
Did the Examiner err in rejecting claims 4, 5, 13, and 14 under
35 U.S.C. § 112, second paragraph, as being indefinite for failing to
particularly point out and distinctly claim the subject matter which the
applicants regard as the invention?
Did the Examiner err in rejecting claims 1-20 under 35 U.S.C.
§ 102(b) as being anticipated by Hamilton?
ANALYSIS
The rejection of claims 1-20 under 35 US.C. § 101 as being directed to
judicially-excepted subject matter.
Independent claims 1, 10, and 19
The Appellants argue independent claims 1, 10, and 19 together. See
Appeal Br. 8-21. We select claim 10 as representative of the independent
claims.
Alice Corp. Proprietary Ltd. v. CLS Bank International, 134 S. Ct.
234 7 (2014 ), identifies a two-step framework for determining whether
claimed subject matter is judicially excepted from patent-eligibility under
35 U.S.C. § 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 that regard, the Examiner determined that the claims are directed to
"posting and retrieving data online which is considered to be an abstract
idea." Final Act. 5. The Examiner also determined that "[t]he claims
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are directed specifically to the processing and organization of information."
Ans. 6 (citing the USPTO's "July 2015 Update[:] Subject Matter
Eligibility"). 3 According to the Examiner, the claims are directed to
concepts similar to abstract ideas identified in, inter alia, SmartGene, Inc. v.
Advanced Biological Labs., SA, 555 F. App'x 950 (Fed. Cir. 2014),
Dealertrack, Inc. v. Huber, 674 F.3d 1315 (Fed. Cir. 2012), and
Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709 (Fed. Cir. 2014). Ans. 8-9.
In particular, the Examiner determined that the claims relate to "receiving,
comparing and retrieving data, which can be performed mentally" or "by a
human using a pen and paper" and are therefore similar to the claims held
ineligible in CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366
(Fed. Cir. 2011) and Cyberfone Sys., LLC v. CNN Interactive Grp., Inc.,
558 F. App'x 988 (Fed. Cir. 2014) (non-precedential). Id. at 6.
The Appellants argue that "the present claims are not similar to those
in the cases cited by the Examiner, the case citations do not provide support
for the Examiner's conclusion that the claims at issue are directed to an
abstract idea." Appeal Br. 10. According to the Appellants, "claim 10
provides specific details regarding the retrieval of a response, including the
trigger for the retrieving, the source of the response, and the composition of
the response" and "[ t ]hese specific details preclude the possibility that a
generic, unconfigured processor (like the conventionally-operating telephone
of Cyberfone) performs the steps of the method claim." Id. The Appellants
also argue that the claims are not directed to a fundamental economic
3 Available at: https://www.uspto.gov/patent/laws-and-
regulations/examination-policy/subject-matter-eligibility.
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practice (id. at 13-14), or to certain methods of organizing human activity
(id. at 14). In that regard, the Appellants contend that "the claims at issue
are directed to a specific set of operations for retrieving a response to an
inquiry" (id. at 13) and that "[t]he claims here are directed to particular
methods of exchanging data between computer systems in a manner that is
new, useful, and non-obvious" (id. at 14). See also Reply Br. 8-10, 15-16.
We are not persuaded of error in the Examiner's rejection.
The "directed to" inquiry in the claims applies a stage-one filter to the
claims, considered in light of the Specification, based on whether "their
character as a whole is directed to excluded subject matter." Internet
Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015);
see also Genetic Techs. Ltd. v. Merial L.L.C., 818 F.3d 1369, 1376 (Fed. Cir.
2016); Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016)
(Inquiring into "'the focus of the claimed advance over the prior art."').
Claim 10 recites "[a] method comprising:" ( 1) storing first
information, (2) retrieving second information, and (3) retrieving third
information. Claim 10 specifies the content of the first, second, and third
information, namely "a posting for an item," "a predetermined question
about the posting," and "an answer to the [predetermined question], the
answer based on at least a portion of the posting," respectively. Claim 10
also specifies that the source of the first information (i.e., the posting) is "a
first user" and that the source of the third information (i.e., the answer) is "a
response source," and that the third information is retrieved in response to
"an inquiry received from a second user."
The court in Enfzsh put the question as being "whether the focus of the
claims is on [a] specific asserted improvement in computer capabilities ...
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or, instead, on a process that qualifies as an 'abstract idea' for which
computers are invoked merely as a tool." Enfish, 822 F.3d at 1335-1336.
The court found that the "plain focus of the claims" was on "an
improvement to computer functionality itself, not on economic or other tasks
for which a computer is used in its ordinary capacity." Id. at 1336.
"In determining the eligibility of respondents' claimed process for
patent protection under§ 101, their claims must be considered as a whole."
Diamond v. Diehr, 450 U.S. 175, 188 (1981). The question is whether the
claims as a whole "focus on a specific means or method that improves the
relevant technology" or are "directed to a result or effect that itself is the
abstract idea and merely invoke generic processes and machinery." McRO,
Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314 (Fed. Cir.
2016). In this case, we find that claim 10, as a whole, is focused on storing
and retrieving information, namely answers to predetermined questions. We
do not see that claim 10 is focused on an improvement to any technology
such as a computer or an improved process for storing or retrieving data in a
computer. Here, as in CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d
1366, 1372 (Fed. Cir. 2011), all of claim lO's "method steps can be
performed in the human mind, or by a human using a pen and paper." As in
CyberSource, the method of claim 10 "can be performed by a human who
simply reads records ... from a preexisting database." Id. Storing and
retrieving information, including answers to questions, is akin to purely
mental processes. Return Mail, Inc. v. United States Postal Serv., 868 F.3d
1350, 1368 (Fed. Cir. 2017) ("Encoding and decoding mail recipient
information-including whether the sender wants a corrected address-are
processes that can, and have been, performed in the human mind.").
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"The 'abstract idea' step of the inquiry calls upon us to 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)
(citing Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353
(Fed. Cir. 2016)); see also Enfish, 822 F.3d at 1335, quoted in Apple, Inc. v.
Ameranth, Inc., 842 F.3d 1229, 1241 (Fed. Cir. 2016).
In that regard, the Background section of the Specification discusses
the problem, which is that "users may have questions about [an online
postings]" (Spec. para. 2). "Examples of postings include items for sale,
auctions, classifieds, blog posts, service offerings, show times, invitations to
events, and the like." Id. More specifically, the problem is that "[t]he poster
[] may not be able to respond to the question due to the volume of questions
received or because the question may relate to the online publication system
rather than the poster or the posting itself." Id. para. 21. According to the
Specification, the inventors recognized that a question may be "answerable
using information included in the posting." Id. The Specification discloses
that the inventors solved the problem by providing "an inquiry system 100
for answering inquiries about a posting in an online publication system." Id.
para. 23. As an example, the Specification describes that the posting may be
an item for sale, and the inquiry system is able "to answer a stored inquiry
such as 'What is the condition of the item?"' Id. para. 30. In light of the
Specification's description of the problem and solution, the advance over the
prior art by the claimed invention is providing answers to predetermined
questions related to an online posting.
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Given the focus of claim 10 as a whole, in light of the Specification, is
on data gathering activities4 in support of providing answers to
predetermined questions related to an online posting, the claims are properly
characterized as being "directed to" storing and retrieving answers to
predetermined questions. Storing and retrieving answers to predetermined
questions is an abstract idea. The human mind naturally stores and retrieves
answers to questions. It is also similar to the practice of automated
telephone systems that provide pre-recorded information long used by movie
theaters (e.g., "for show times, press '1 ') and banks (e.g., "for account
balance, press '2 "'). Cf Content Extraction & Transmission LLC v. Wells
Fargo Bank, Nat. Ass 'n, 776 F.3d 1343, 1347 (Fed. Cir. 2014), cert. denied,
136 S. Ct. 119 (2015) (holding that claims reciting "1) collecting data,
2) recognizing certain data within the collected data set, and 3) storing that
recognized data in a memory" were drawn to an abstract idea); Digitech
Image Techs., LLC v. Elecs.for Imaging, Inc., 758 F.3d 1344, 1351
(Fed. Cir. 2014) ("Without additional limitations, a process that employs
mathematical algorithms to manipulate existing information to generate
additional information is not patent eligible."); W. View Research, LLC v.
Audi AG, 685 F. App'x 923, 926 (Fed. Cir. 2017) (non-precedential) ("These
claims do not go beyond receiving or collecting data queries, analyzing the
data query, retrieving and processing the information constituting a response
4 Cf Elec. Power Grp., 830 F.3d at 1353 (When "[t]he focus of the asserted
claims" is "on collecting information, analyzing it, and displaying certain
results of the collection and analysis," the claims are directed to an abstract
idea).
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to the initial data query, and generating a visual or audio response to the
initial data query.").
The Appellants argue that the claims do not seek to tie up a judicial
exception such that others cannot practice it. Appeal Br. 14--15; see also
Reply Br. 12-17.
It is true that the Supreme Court has characterized pre-emption as a
driving concern for patent eligibility. See Alice, 134 S. Ct. at 2354. But
characterizing pre-emption as a driving concern for patent eligibility is not
the same as characterizing pre-emption as the sole test for patent eligibility.
"The Supreme Court has made clear that the principle of preemption is the
basis for the judicial exceptions to patentability" and "[ fJor this reason,
questions on preemption are inherent in and resolved by the § 101 analysis."
Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir.
2015) (citing Alice, 134 S. Ct. at 2354). However, "[w]hile preemption may
signal patent ineligible subject matter, the absence of complete preemption
does not demonstrate patent eligibility." Id. at 1379. Cf OIP Techs., Inc. v.
Amazon.com, Inc., 788 F.3d 1359, 1362---63 (Fed. Cir. 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."). "What matters is whether a claim threatens to subsume the full
scope of a fundamental concept, and when those concerns arise, we must
look for meaningful limitations that prevent the claim as a whole from
covering the concept's every practical application." CLS Bank Int 'l v. Alice
Corp. Pty. Ltd., 717 F.3d 1269, 1281 (Fed. Cir. 2013) (Lourie, J.,
concurring). Here, we find the claimed subject matter covers patent-
ineligible subject matter. Accordingly, the pre-emption concern is
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necessarily addressed. "Where a patent's claims are deemed only to disclose
patent ineligible subject matter under the Mayo framework, [] preemption
concerns are fully addressed and made moot." Ariosa Diagnostics, 788 F.3d
at 1379.
We also are not persuaded by Appellants' argument that the present
claims should have been analyzed using the streamlined analysis. Appeal
Br. 11-12. As set forth in the Office's "2014 Interim Guidance on Patent
Subject Matter Eligibility," 79 Fed. Reg. 74618 (Dec. 16, 2014), the
streamlined analysis is an optional tool that an examiner may use at his or
her discretion. The Guidance, thus, instructs that "[ fJor purposes of
efficiency in examination, a streamlined eligibility analysis can be used."
See Interim Guidance, 79 Fed. Reg. at 74625 (emphasis added). The
Guidance also instructs that "if there is doubt as to whether the applicant is
effectively seeking coverage for a judicial exception itself, the full analysis
should be conducted to determine whether the claim recites significantly
more than the judicial exception." Id. (emphasis added). The Examiner's
decision here to perform a full§ 101 analysis was, in our view, a proper
exercise of the Examiner's discretion.
In view of the above, we see no error in the Examiner's determination
that claim 10 is directed to an abstract idea. We reach the same conclusion
as to system claim 1 and media claim 19. As in Alice, "[t]he method claims
recite the abstract idea implemented on a generic computer; the system
claims recite a handful of generic computer components configured to
implement the same idea." Alice, 134 S. Ct. at 2360.
Step two of the Alice framework is "a search for an 'inventive
concept'-i.e., an element or combination of elements that is 'sufficient to
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ensure that the patent in practice amounts to significantly more than a patent
upon the [ineligible concept] itself."' Alice, 134 S. Ct. at 2355 (alteration in
original) (quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc.,
566 U.S. 66, 73 (2012)).
In that regard, the Examiner determined that "when considering the
elements and combinations of elements, the claims as a whole, do not
amount to significantly more than the abstract idea itself." Final Act. 5.
According to the Examiner, the claims "merely recite additional elements
(e.g. processors) in a broad and generic manner." Ans. 9. And the Examiner
determined that the computer-implemented aspects of the claims amount to,
inter alia, "[p ]roviding a computer," "[p ]roviding storage for a variety of
descriptive materials," "[r]etrieving particular descriptive materials," and
"retrieving matching descriptive materials." Id. at 9-10.
The Appellants argue that even assuming that "the claims at issue are
directed to an abstract idea, the claims at issue are nevertheless directed to
patentable subject matter" under step two of Mayo/Alice. Appeal Br. 16
( emphasis omitted). According to the Appellants, "the operations recited in
the claims at issue are at a lower-level of generality than the operations
recited in the claims at issue in Bilski and Alice." Id. at 17. But the
Appellants merely reproduce claim limitations without explaining how those
limitations amount to more than the abstract idea of storing and retrieving
answers to predetermined questions.
The Appellants next argue that "the functions recited in the claims at
issue are not purely conventional functions." Id. According to the
Appellants, "[ e ]ven if retrieving a response could be considered a purely
conventional function, doing so wherein 'the retrieve[d] response
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compris[es] an answer ... based on at least a portion of the posting
submitted by the first user' is not." Id. And the Appellants argue that "taken
in combination with previous elements which define 'the stored inquiry,'
'the posting,' and 'the first user,' the element is more specific and the
distinction between the scope of the claims and the scope of the alleged
abstract idea becomes even clearer." Id. at 18.
The Appellants' arguments that the posting, the stored inquiry, and the
retrieved response each comprise a certain type of information is
unpersuasive of Examiner error because that is reasonably characterized as
printed matter (cf In re Distefano, 808 F.3d 845 (Fed. Cir. 2015)) and as
such is patentably inconsequential. Furthermore, information collection and
analysis, including when limited to particular content, is within the realm of
abstract ideas. See, e.g., Elec. Power Grp, 830 F.3d at 1353 ("we have
treated collecting information, including when limited to particular content
(which does not change its character as information), as within the realm of
abstract ideas."); SAP America, Inc. v. Investpic, LLC, -- F.3d ---, 2018 WL
3656048, *6 (Fed. Cir. 2018) ("As many cases make clear, even if a process
of collecting and analyzing information is 'limited to particular content' or a
particular 'source,' that limitation does not make the collection and analysis
other than abstract." (quoting Elec. Power Group, 830 F.3d at 1355 (citing
cases)).
The mere combination of data sources, however, does not make
the claims patent eligible. As we have explained, "merely
selecting information, by content or source, for collection,
analysis, and [announcement] does nothing significant to
differentiate a process from ordinary mental processes, whose
implicit exclusion from § 101 undergirds the information-based
category of abstract ideas."
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FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1097 (Fed. Cir.
2016) (quoting Elec. Power Grp., 830 F.3d at 1355).
The Appellants argue that the claims are similar to the claims held
eligible in DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir.
2014). Appeal Br. 18-21; see also Reply Br. 18-20. According to the
Appellants, "a computer operating according to the present claims
constitutes an improvement to the technology for the computer-
implemented provision of customer services" and the claims "constitute an
improvement to the technical field of machines that provide customer
services." App. Br. 20. And the Appellants contend that the claims "solve a
technological problem in conventional industry practice of, for example, the
automatic generation and provision of responses to inquiries" which the
Appellants characterize as "a problem rooted in computer technology and
arising particularly in the realm of provision of network-based services." Id.
at 21. In particular, the Appellants contend that the limitation of "selectively
retriev[ing] ... a response" qualifies as significantly more under step two of
Alice. Id. at 20-21.
In DDR Holdings, the Federal Circuit determined that although the
patent claims at issue involved conventional computers and the Internet, the
claims nevertheless addressed the problem of retaining website visitors who,
if adhering to the routine, conventional functioning of the Internet hyperlink
protocol, would be transported instantly away from a host's website after
"'clicking"' on an advertisement and activating a hyperlink. DDR Holdings,
773 F.3d at 1257. The court determined that those claims were directed to
patent-eligible subject matter because they claim a solution "necessarily
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rooted in computer technology in order to overcome a problem specifically
arising in the realm of computer networks." Id.
No such technological advance is evident in the claimed invention.
Unlike the situation in DDR Holdings, the claimed computer components
operate precisely in the expected manner of storing data in association with
other data, and sending and receiving data via a conventional network. (See
Spec para. 59 ("a network 1404 (e.g., the Internet or Wide Area Network
(WAN))")). Cf buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed.
Cir. 2014) ("That a computer receives and sends the information over a
network-with no further specification-is not even arguably inventive");
SmartGene, 555 F. App'x at 955 ("The claim does not purport to identify
new computer hardware: it assumes the availability of physical components
for input, memory, look-up, comparison, and output."). Nothing in the
claim, understood in light of the Specification, requires anything more than
conventional computer implementation. "The specification fails to provide
any technical details for the tangible components, but instead predominately
describes the system and methods in purely functional terms." In re TL!
Commc'ns LLC Patent Litig., 823 F.3d 607,612 (Fed. Cir. 2016). "[A]fter
Alice, there can remain no doubt: recitation of generic computer limitations
does not make an otherwise ineligible claim patent-eligible." DDR
Holdings, 773 F.3d at 1256 (citation omitted).
We also are not persuaded of error by the Appellants' argument that
"the unique combination of operations recited in the claims of the present
application is not 'conventional,' and the Examiner has not provided
evidence to the contrary." Appeal Br. 19. See also Reply Br. 17 ("the
functions of each step of the claims at issue are not purely conventional")
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( emphasis omitted). Evidence may be helpful in certain situations where, for
instance, facts are in dispute. But it is not always necessary. The Appellants
do not show that the Examiner makes a finding that the claimed combination
is well known and conventional for which supporting evidence may
arguably be called for. Cf Berkheimer v. HP Inc., 881 F.3d 1360, 1368
(Fed. Cir. 2018) ("When there is no genuine issue of material fact regarding
whether the claim element or claimed combination is well-understood,
routine, [or] conventional to a skilled artisan in the relevant field, this issue
can be decided on summary judgment as a matter of law.").
However, the Examiner does take the position that "the computing
element [processor] recited in [Appellants'] claims [is] merely generic in
nature." Ans. 31-32. The Appellants disagree. However, the Specification
belies the Appellants' argument that the claimed subject matter does not
merely use generic computers as a tool or that their functioning is improved
by the claimed scheme. Regarding the claimed "one or more processors,"
the Specification discloses that "[ t ]he example computer system 1500
includes a processor 1502 (e.g., a central processing unit (CPU) a graphics
processing unit (GPU) or both)." Spec. para. 66. The Specification does not
disclose a new processor or any detail regarding processor 1502. We note
that system claim 1 nominally defines a system comprising three different
computer components: (a) "a posting engine," (b) "an inquiry engine," and
(c) "a response engine." Appeal Br. 23 (Claims Appendix). The
Specification discloses the claimed computer elements in functional and
result-oriented terms. Regarding element (a), "[t]he posting engine 102
stores, or has access to, postings submitted by posters in the online
publication system." Spec. para. 24. Regarding element (b), "[t]he inquiry
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engine 104 stores, or has access to, inquiries corresponding to at least a
portion of the postings." Id. para. 25. Regarding element (c), "[t]he
response engine 106 may access or retrieve a stored response to an inquiry"
and "[i]n some embodiments, the response engine 106 may generate a
response to an inquiry in response to a selection of a stored inquiry by a
user." Id. para. 28. Although the response engine is itself described as
comprising various other modules ( e.g., a settings module 202), these are
also described in purely functional terms. For example, "[t]he optional
settings module 202 is to receive and implement one or more settings from
the poster." Id. para. 29. The machine that implements the claimed
functionality is described as follows:
The machine may be a server computer, a client computer, a
personal computer (PC), a tablet PC, a set-top box (STB), a
Personal Digital Assistant (PDA), a cellular telephone, a web
appliance, a network router, switch or bridge, or any machine
capable of executing a set of instructions (sequential or
otherwise) that specify actions to be taken by that machine.
Id. para. 65 ( emphasis added). Thus, the Specification supports the view
that the additional elements are simply conventional computer components
that serve as a conduit for the performance of a scheme for storing and
retrieving answers to predetermined questions. Cf In re TL! Commc 'ns,
823 F.3d at 612:
Put differently, the telephone unit itself is merely a conduit for
the abstract idea of classifying an image and storing the image
based on its classification. Indeed, the specification notes that it
"is known" that "cellular telephones may be utilized for image
transmission," id. at col. 1 11. 31-34, and existing telephone
systems could transmit pictures, audio, and motion pictures and
also had "graphical annotation capability," id. at col. 1 11. 52-59.
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A difficulty here is that claim 10 recites an "online publication system
and "one or more processors" that, in light of the Specification, appears to
cover generic devices. We do not see in the subject matter as claimed any
assertedly inventive technology. Nor does the claim provide details as to
any non-conventional software. The claim language provides only a result-
oriented solution with insufficient detail for how a computer accomplishes it.
Cf Interval Licensing LLC v. AOL, Inc., 896 F.3d. 1335, 2018 WL 3485608,
at *6 (Fed. Cir. July 20, 2018):
Other software-based claimed inventions, however, have
failed to pass section 101 muster, because they did not recite
any assertedly inventive technology for improving computers as
tools and/or because the elements of the asserted invention were
so result-based that they amounted to patenting the patent-
ineligible concept itself.
See also Credit Acceptance Corp. v. Westlake Services, 859 F.3d 1044, 1057
(Fed. Cir. 2017):
Significantly, the claims do not provide details as to any non-
conventional software for enhancing the financing process. See
Intellectual Ventures I LLC v. Capital One Fin. Corp., 850 F.3d 1332,
1342 (Fed. Cir. 2017) (explaining that "[o]ur law demands more" than
claim language that "provides only a result-oriented solution, with
insufficient detail for how a computer accomplishes it"); Elec. Power
Grp., 830 F.3d at 1354 (explaining that claims are directed to an
abstract idea where they do not recite "any particular assertedly
inventive technology for performing [ conventional] functions").
The Appellants' arguments challenging the Examiner's determination
that independent claims 1, 10, and 19 do not add anything significantly more
to transform the abstract idea to which they are directed into an inventive
concept are unpersuasive.
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We have considered all of the Appellants' remaining arguments and
have found them unpersuasive. Accordingly, we sustain the Examiner's
determination that independent claims 1, 10, and 19 are directed to ineligible
subject matter under 35 U.S.C. § 101. Cf LendingTree, LLC v. Zillow, Inc.,
656 F. App'x 991, 997 (Fed. Cir. 2016) ("We have considered all of
Lending Tree's remaining arguments and have found them unpersuasive.
Accordingly, because the asserted claims of the patents in suit are directed to
an abstract idea and do not present an 'inventive concept,' we hold that they
are directed to ineligible subject matter under 35 U.S.C. § 101.").
Dependent claims 2-9, 11-18, and 20
The Appellants complain that the Examiner has not separately
addressed each of the dependent claims. Appeal Br. 10-11; see also Reply
Br. 10-12. Yet, except to reproduce limitations of claims 7 and 8 and to say
that "[t]hese additional elements are neither abstract ideas in their own rights
nor necessary features in implementing the alleged abstract idea of the
independent claims," nothing more is said about why the limitations in said
claims render said claims patent-eligible. Appeal Br. 11. From our review
of the dependent claims, they appear to describe various information
gathering/processing/displaying schemes, which do little to patentably
transform the abstract idea. For example, claim 7 calls for "a display engine
to provide a user interface depicting the stored inquiry and the retrieved
response." Appellants do not direct us to any evidence that the "user
interface" of claim 7 provides an improvement to the functioning of the
computer itself. Claim 8 calls for selecting the stored inquiry based on
particular data. These claims add steps of displaying and selecting certain
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information that do little to transform the information-gathering abstract idea
that claim 1 is directed to. Cf Apple, Inc., 842 F.3d at 1244 ("These claims
depend from independent claims which were found to be directed to
unpatentable subject matter, as discussed above. Merely appending this
preexisting practice to those independent claims does not make them
patentable. It is an insignificant post-solution activity."). Also, where all
claims are directed to the same abstract idea, "addressing each claim of the
asserted patents [is] unnecessary." Content Extraction, 776 F.3d at 1348.
The rejection is sustained.
The rejection of claims 4, 5, 13, and 14 under 35 US. C. § 112, second
paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which the inventor regards as the
invention.
The Examiner's position is that "the claim limitations recite a
transaction state of the item and the transaction states include a pre-purchase
and/or a post-purchase of the item" and "[i]t is unclear however if these
states relate to the pre/post purchase of the item by the first user or second
user." Final Act. 6. In the Answer, the Examiner explains:
The term transaction is so broad that one would not be
reasonably apprised of when a transaction and transaction state
on an item begins and when it ends. Does a transaction state of
an item comprise browsing the item? Placing the item in a
shopping cart? Submitting payment information? Inquiring
about inventory levels of the item? These are mere examples as
to the breadth of the term "transaction".
Ans. 2.
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We will reverse this rejection for the reasons discussed in the Appeal
Brief, namely "that the Examiner's rejection is based on the breadth of the
claims, not indefiniteness." Appeal Br. 6.
The Examiner appears to be concerned about how the invention of
claims 4, 5, 13, and 14 operates. That is a concern better raised under the
enablement requirement of 35 U.S.C. § 112.
The definiteness inquiry focuses on whether those skilled in the
art would understand the scope of the claim when the claim is
read in light of the rest of the specification. Orthokinetics, Inc.
v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir.
1986). Even if the written description does not enable the
claims, the claim language itself may still be definite. In re
Hyatt, 708 F.2d 712, 714--15 (Fed. Cir. 1983); In re Miller, 441
F.2d 689,693 (CCPA 1971) ("[B]readth is not to be equated
with indefiniteness .... ").
Union Pac. Res. Co. v. Chesapeake Energy Corp., 236 F.3d 684, 692
(Fed. Cir. 2001).
The rejection is not sustained.
The rejection of claims 1-20 under 35 USC§ 102(b) as being anticipated
by Hamilton.
The Appellants argue that Hamilton does not disclose "'the retrieved
response comprising an answer to the stored inquiry, the answer based on
at least a portion of the posting submitted by the first user"' as recited in
independent claims 1, 10, and 19. Appeal Br. 7-8. According to the
Appellants, the argued-over limitation is "completely different than retrieved
information based on 'feedback corresponding to the inquiry entered by the
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customer or shopper' as taught by Hamilton." Id. at 7 ( citing paragraph 21
of Hamilton).
The Examiner's position is that Hamilton discloses said limitation in
paragraph 20. Final Act. 8. According to the Examiner, paragraph 20
discloses that "the responses are based on the information provided by the
original user as well as other sources." Id. Responding to the Appellants'
argument in the Answer, the Examiner simply states that "a prior art
reference, in its entirety, must be considered for all that it expressly teaches
and fairly suggests to one having ordinary skill in the art." Ans. 21. But the
Examiner does not explain where in Hamilton the argued limitation is
disclosed. For example, the Examiner has not made a clear finding as to
what disclosure in Hamilton constitutes the claimed "posting," the claimed
"stored inquiry," or the claimed "response comprising an answer."
We have carefully reviewed the cited passages in the prior art relied
on to determine if in fact Hamilton expressly describes said claim limitation,
including "the answer based on at least a portion of the posting submitted by
the first user." It is evident from paragraph 20 that Hamilton discloses
collecting feedback from multiple users, tagging the feedback to facilitate
retrieval, and sharing said feedback with other users. The existence of a
stored collection of feedback that all users can share is inadequate as
evidence of an express description of "the retrieved response comprising an
answer to the stored inquiry, the answer based on at least a portion of the
posting submitted by the first user." To anticipate, there must be no
difference between the claimed invention and the reference disclosure, as
viewed by a person of ordinary skill in the field of the invention. Scripps
Clinic & Research Found. v. Genentech Inc., 927 F.2d 1565, 1576 (Fed. Cir.
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1991 ). Here, there is a difference; that is, Hamilton discloses sharing
feedback but the claim requires more: that an answer to a stored inquiry is
based on at least a portion of the posting submitted by the first user.
For the foregoing reasons, a prima facie case of anticipation has not
been made out in the first instance based on a preponderance of the
evidence. Accordingly, the rejection is not sustained.
CONCLUSIONS
The rejection of claims 1-20 under 35 U.S.C. § 101 as being directed
to judicially-excepted subject matter is affirmed.
The rejection of claims 4, 5, 13, and 14 under 35 U.S.C. § 112, second
paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which the applicants regard as the
invention is reversed.
The rejection of claims 1-20 under 35 U.S.C. § 102(b) as being
anticipated by Hamilton is reversed.
DECISION
The decision of the Examiner to reject claims 1-20 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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