Ex Parte Kourkoumelis et al

Patent Trials and Appeals Board

Jun 20, 2019

14042638 - (D) (P.T.A.B. Jun. 20, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/042,638 09/30/2013
25541 7590 06/24/2019
NEAL, GERBER, & EISENBERG
SUITE 1700
2 NORTH LASALLE STREET
CHICAGO, IL 60602
FIRST NAMED INVENTOR
Alex Kourkoumelis
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.
019638-8178 (32US2) 1179
EXAMINER
KHATTAR, RAJESH
ART UNIT PAPER NUMBER
3693
NOTIFICATION DATE DELIVERY MODE
06/24/2019 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):
twilliams@ngelaw.com
ipusmail@ngelaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ALEX KOURKOUMELIS, SORIN PETREA,
DINESH PATEL, and ADAM RICHARD FISCHER 1
Appeal2018-002678
Application 14/042,638
Technology Center 3600
Before JENNIFER S. BISK, LARRY J. HUME, and
JULIET MITCHELL DIRBA, Administrative Patent Judges.
BISK, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 1-23, which are all claims pending in the application.
We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 Appellants identify the real party in interest as Redbox Automated Retail,
LLC. Appeal Br. 3.
Appeal2018-002678
Application 14/042,638
BACKGROUND2
Appellants' disclosed embodiments and claimed invention relate to a
system and method for dynamic barcode generation related to event
ticketing. Spec. Title. Claim 1, reproduced below, is illustrative of the
subject matter on appeal:
1. A method of dynamically generating a ticket barcode for
one or more tickets of a ticket order, each of the one or more
tickets for admission to an event at a venue, using a processor
in communication with a network, the method comprising:
[ (1)] receiving the ticket order at the processor, the
ticket order comprising a production identifier for
uniquely identifying a production of the event and the
venue;
[(2)] retrieving barcode attributes associated with the
venue from a database to the processor, the barcode
attributes comprising a barcode prefix, a barcode suffix, a
barcode total length, and a barcode symbology;
[(3)] determining a barcode core length comprising a
length of the barcode prefix and a length of the barcode
suffix each subtracted from the barcode total length,
using the processor;
[ ( 4)] generating a plurality of random barcodes for the
production, using the processor, wherein each of the
plurality of random barcodes has the barcode core length,
and each random barcode of the plurality of random
barcodes is unique as to each other;
[(5)] storing, in a database, the plurality of random
barcodes for the production, using the processor;
2 Throughout this Decision we have considered the Specification filed
September 30, 2013 ("Spec."), the Final Rejection mailed March 6, 2017
("Final Act."), the Appeal Brief filed September 5, 2017 ("Appeal Br."), the
Examiner's Answer mailed November 15, 2017 ("Ans."), and the Reply
Brief filed January 16, 2018 ("Reply Br.")
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Application 14/042,638
[(6)] marking as used a subset of the plurality of random
barcodes in the database, using the processor, the subset
associated with the one or more tickets in the ticket
order;
[(7)] receiving the subset of the plurality of random
barcodes from the database at the processor;
[(8)] generating the ticket barcode for each random
barcode of the subset of the plurality of random barcodes,
using the processor, wherein the ticket barcode has the
barcode total length, and wherein the ticket barcode
comprises the random barcode of the subset of the
plurality of random barcodes;
[(9)] associating, in the database, the ticket barcode for
each of the subset of the plurality of random barcodes
with each of the one or more tickets in the ticket order,
using the processor; and
[ ( 10)] generating an image of the ticket barcode for each
of the subset of the plurality of random barcodes, based
on the barcode symbology, using the processor.
Appeal Br. 21-22 (Claims App 'x) (limitation numbering added).
REJECTIONS
Claims 1-23 stand rejected under 35 U.S.C. § 101 as being directed to
patent-ineligible subject matter. Final Act. 2--4.
ANALYSIS
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). To the extent Appellants have not advanced separate,
substantive arguments for particular claims, or other issues, such arguments
are waived. 37 C.F.R. § 4I.37(c)(l)(iv).
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Application 14/042,638
We have considered all of Appellants' arguments and any evidence
presented. We highlight and address specific findings and arguments for
emphasis in our analysis below.
Rejection of Claims 1-20 under 35 U.S. C. § 1 OJ
Section 101 of the Patent Act provides that "any new and useful
process, machine, manufacture, or composition of matter, or any new and
useful improvement thereof' is patent eligible. 3 5 U.S. C. § 101. But the
Supreme Court has long recognized an implicit exception to this section:
"'Laws of nature, natural phenomena, and abstract ideas are not
patentable."' Alice Corp. v. CLS Bankint'l, 573 U.S. 208,216 (2014)
(quoting Ass 'nfor Molecular Pathology v. Myriad Genetics, Inc., 569 U.S.
576, 589 (2013)). To determine whether a claim falls within one of these
excluded categories, the Court has set out a two-part framework. The
framework requires us first to consider whether the claim is "directed to one
of those patent-ineligible concepts." Alice, 573 U.S. at 217 (citation
omitted). If so, we then examine "the elements of each claim both
individually and 'as an ordered combination' to determine whether the
additional elements 'transform the nature of the claim' into a patent-eligible
application." Alice, 573 U.S. at 217 (quoting Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 566 U.S. 66, 78, 79 (2012)). That is, we examine
the claims for an "inventive concept," "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,
573 U.S. at 217-18 (alteration in original) (quoting Mayo, 566 U.S.
at 72-73).
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The Patent Office recently issued guidance regarding this framework.
See USPTO, 2019 Revised Patent Subject Matter Eligibility Guidance, 84
Fed. Reg. 50 (Jan. 7, 2019) ("Revised Guidance"). Under the Revised
Guidance, to decide whether a claim is "directed to" an abstract idea, we
evaluate whether the claim (1) recites subject matter falling within an
abstract idea grouping listed in the Revised Guidance and (2) fails to
integrate the recited abstract idea into a practical application. See Revised
Guidance, 84 Fed. Reg. at 51. If the claim is "directed to" an abstract idea,
as noted above, we then determine whether the claim recites an inventive
concept. The Revised Guidance explains that when making this
determination, we should consider whether the additional claim elements
add "a specific limitation or combination of limitations that are not well-
understood, routine, conventional activity in the field" or "simply append[]
well-understood, routine, conventional activities previously known to the
industry." Revised Guidance, 84 Fed. Reg. at 56.
For purposes of the§ 101 rejection, Appellants argue claims 1-22
together as a group. See App. Br. 9-18; Reply Br. 2-3. Therefore,
consistent with the provisions of 37 C.F.R. § 4I.37(c)(l)(iv), we limit our
discussion to independent claims 1 and 23. Independent claim 12 and
dependent claims 2-11 and 13-22 stand or fall with independent claim 1.
With these principles in mind, we tum to the Examiner's § 101
rejection.
The Judicial Exception-Abstract Idea
The Examiner determined the claims are directed to the abstract idea
of "creating a ticket with a barcode for an event." Final Act. 3. For the
reasons explained below, we agree that the claims recite an abstract idea.
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Application 14/042,638
As quoted and enumerated above, claim 1 includes ten main
limitations. These limitations recite the following steps: receiving an order
with a unique production identifier (limitation ( 1)); retrieving, from a
database, barcode attributes (limitation (2)) and core length barcodes
(limitation (7) ); determining a barcode core length using a calculation with
values based on the retrieved attributes (limitation (3)); generating a
plurality of unique random barcodes with the calculated core length
(limitation (4)), a set of total length barcodes using the core length barcodes
(limitation (8)), and an image of the total length barcodes using the received
barcode symbology (limitation (1 O)); storing the generated core length
barcodes (limitation ( 5) ); marking as used a subset of the core length
barcodes (limitation ( 6) ); and associating the subset of core length barcodes
with the ordered tickets (limitation (9)). Appeal Brief 21-22 (Claims
App 'x). This process encompasses generating images of tickets with unique
barcodes in response to ticket orders, which is a method of organizing
human activity-a commercial interaction. Claim 23 contains substantively
similar limitations to limitations 1-10 of claim 1. Id. at 29-30 (Claims
App'x).
Accordingly, we conclude the claims recite a certain method of
organizing human activity identified in the Revised Guidance (a commercial
interaction), and thus, an abstract idea. 3 Revised Guidance, 84 Fed. Reg.
3 Our reviewing court recognizes that "[a]n abstract idea can generally be
described at different levels of abstraction." Apple, Inc. v. Ameranth, Inc.,
842 F.3d 1229, 1240 (Fed. Cir. 2016). That need not and, in this case does
not, "impact the patentability analysis." Id. at 1240-1241. Further, "[a]n
abstract idea can generally be described at different levels of abstraction ....
The Board's slight revision of its abstract idea analysis does not impact the
patentability analysis." Id. Moreover, merely combining several abstract
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Application 14/042,638
at 52, 53 (listing "commercial or legal interactions" as one of the
"enumerated groupings of abstract ideas").
Integration of the Judicial Exception into a Practical Application
If a claim recites a judicial exception, we determine whether the
recited judicial exception is integrated into a practical application of that
exception by (a) identifying whether there are any additional elements
recited in the claim beyond the judicial exception( s ); and (b) evaluating
those additional elements individually and in combination to determine
whether they integrate the exception into a practical application. If the
recited judicial exception is integrated into a practical application, the claim
is not directed to the judicial exception.
Here, claim 1 recites the additional elements of "a processor in
communication with a network" and "a database." Appeal Br. 21-22
(Claims App'x). Considering claim 1 as a whole, the additional elements do
not apply or use the abstract idea in a meaningful way such that the claim as
a whole is more than a drafting effort designed to monopolize the exception.
The Supreme Court guides that the "prohibition against patenting abstract
ideas 'cannot be circumvented by attempting to limit the use of the formula
to a particular technological environment' or [by] adding 'insignificant
postsolution activity."' Bilski, 561 U.S. at 610-11 (quoting Diamond v.
Diehr, 450 U.S. 175, 191-92 (1981)). Claim 23, additionally recites "a
ideas does not render the combination any less abstract. RecogniCorp, LLC
v. Nintendo Co., 855 F.3d 1322, 1327 (Fed. Cir. 2017) ("Adding one
abstract idea (math) to another abstract idea ... does not render the claim
non-abstract."); see also FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d
1089, 1093-94 (Fed. Cir. 2016) (determining the pending claims were
directed to a combination of abstract ideas).
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Application 14/042,638
article dispensing machine with an interactive display and a card reader" and
"a server." Appeal Brief 29-30 (Claims App 'x).
The Specification describes each of these additional elements as
generic components. For example, the Specification states that "[t]he
processor can be any custom made or commercially available processor" and
"the network communication equipment includes a network card such as
Ethernet card." Spec ,r,r 27, 32. The database is described as "preferably a
relational database, although other types of database architectures may be
used without departing from the principles of the present invention." Id.
,r 35. The Specification describes the article dispensing machine as being
composed of conventional components including a "machine processor," a
first and second "sensor," "a user interface control system," "any one or a
combination of volatile memory elements," "network communication
equipment and circuitry," "a card reader ... , a keypad and/or touch screen
... includ[ing] a monitor made with known technologies" and "[k]nown
audio technology." Id. ,r,r 23, 24, 32, 39, 40. Moreover, "[n]umerous
variations of the architecture of the central server 302 would be understood
by one of skill in the art and are encompassed within the scope of the present
invention." Id. ,r 26.
Appellants' arguments have not persuaded us that claim 1 is "directed
to" a patent-eligible concept. For example, we do not agree that "claim 1 is
directed to a technical solution to a technical problem." Appeal Br. 10.
According to Appellants, "claim 1 includes specific elements that address
the technical problem of generating a ticket at one machine with a barcode
when the tickets are being generated by disparate ticket suppliers and
venues" and it operates "on a specialized machine." Id. at 13. Appellants,
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however, do not point us to support in the Specification for these
contentions. As discussed above, the Specification discusses using
conventional, commercially available devices for each of the computer
elements recited in the claim. See Spec. ,r,r 23--40.
Moreover, the problem to be solved by the invention, as recited by the
Specification includes "a more cost-effective, convenient platform than
brick-and-mortar stores and existing event ticketing schemes." Id. ,r 8. This
improvement is a typical commercial interaction improvement expected by
automating a manual process using a computer. There is no indication that
any resulting increase in efficiency or accuracy comes from the recited
process of generating a barcode itself. See FairWarning, 839 F.3d at 1095
(citing 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.")); see also Intellectual
Ventures I LLC v. Erie Indemnity Co., 711 F. App'x 1012, 1017 (Fed. Cir.
2017) (unpublished) ("Though the claims purport to accelerate the process
of finding errant files and to reduce error, we have held that speed and
accuracy increases stemming from the ordinary capabilities of a general-
purpose computer 'do[] not materially alter the patent eligibility of the
claimed subject matter."' (alteration in original) (citation omitted)).
Appellants also contend the claims are "narrowly drawn to a specific
improvement and do[] not preempt the idea of generating a ticket with a
barcode for an event." Appeal Br. 17. This argument does not alter our
§ 101 analysis. Rather than preemption, the Federal Circuit instructs that the
Alice two-step analysis is the test for whether claims are statutory. "While
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preemption may signal patent ineligible subject matter, the absence of
complete preemption does not demonstrate patent eligibility." Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015).
"Where 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." Id.
Accordingly, even in combination with all the other recited elements,
the addition of "a processor in communication with a network," "a
database," "an article dispensing machine with an interactive display and a
card reader," and "a server" does not integrate the abstract idea into a
practical application because it does not impose any meaningful limits on
practicing the abstract idea. Instead, we agree with the Examiner that the
additional limitations "are simply applying the abstract idea on a computer"
(Final Act. 4). See MPEP4 § 2106.05(±). For these reasons, we determine
that claims 1 and 23 do not integrate the recited abstract idea into a practical
application.
Inventive Concept
Because we agree with the Examiner that claims 1 and 23 are
"directed to" an abstract idea, we consider whether an additional element ( or
combination of elements) adds a limitation that is not well-understood,
routine, conventional ("WURC") activity in the field or whether the
additional elements simply append WURC activities previously known to
the industry, specified at a high level of generality, to the judicial exception.
Revised Guidance, 84 Fed. Reg. at 23. The Examiner's finding that an
4 Manual of Patent Examining Procedure.
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Application 14/042,638
additional element ( or combination of elements) is WURC activity must be
supported with a factual determination. Id. (citing MPEP § 2106.05(d), as
modified by the Berkheimer Memorandum5).
Whether the additional elements ("a processor in communication with
a network," "a database," "a article dispensing machine with an interactive
display and a card reader," and "a server") are WURC activity is a question
of fact. See Berkheimer v. HP Inc., 881 F.3d 1360, 1369 (Fed. Cir. 2018)
("Whether something is well-understood, routine, and conventional to a
skilled artisan ... is a factual determination.").
On the record before us, Appellants have not shown that the claims on
appeal add a specific limitation beyond the judicial exception that is not
"well-understood, routine, and conventional" in the field (see MPEP
§ 2106.05(d)). Other than asserting that limitations 2--4 of the claimed
subject matter "are discrete limitations that provide a specific method of
generating a ticket for a barcode," Appellants do not point to any particular
claimed element that does not qualify as WURC. Appeal Br. 1 7.
In fact, Appellants' Specification demonstrates the WURC nature of
the claimed additional elements because it indicates they may be
implemented with generic devices. Spec. ,r,r 23--40. In addition, courts have
recognized that receiving data over a network, in a manner similar to that
recited in the claims, is WURC. OIP Techs., Inc. v. Amazon.com, Inc., 788
F.3d 1359, 1363 (Fed. Cir. 2015) (sending messages over a network);
5 Robert W. Bahr, Changes in Examination Procedure Pertaining to Subject
Matter Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v.
HP, Inc.) (2018) (hereinafter "Berkheimer Memorandum").
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buySAFE, 765 F.3d 1350, 1355 (Fed. Cir. 2014) (computer receives and
sends information over a network).
For these reasons, we conclude that claims 1 and 23, considered as a
whole, do not include an inventive concept.
Conclusion
Therefore, we sustain the Examiner's§ 101 rejection of independent
claims 1 and 23. We also sustain the Examiner's§ 101 rejection of claims
2-22, for which Appellants rely on the same arguments made with respect to
claim 1. Appeal Br. 18.
CONCLUSION
We conclude Appellants have not demonstrated the Examiner erred in
rejecting claims 1-23 under 35 U.S.C. § 101.
DECISION
We affirm the Examiner's rejection of claims 1-23.
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). See
37 C.F.R. § 41.50(±).
AFFIRMED
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