Ex Parte Lambert et al

Patent Trial and Appeal Board

Jun 19, 2017

12987918 (P.T.A.B. Jun. 19, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O.Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/987,918 01/10/2011 Susan Elaine LAMBERT 05DIS019STUDIO 9461
820.058CON
77755 7590 06/19/2017
DISNEY ENTERPRISES, INC.
c/o Ference & Associates LLC
409 Broad Street
Pittsburgh, PA 15143
EXAMINER
LEVINE, ADAM L
ART UNIT PAPER NUMBER
3625
MAIL DATE DELIVERY MODE
06/19/2017 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 SUSAN ELAINE LAMBERT, WILLAIM ROBERT BALFOUR,
MIROSLAV KACMAR, MICHAEL JOSEPH KASPROW,
and JUSTIN JOLYON PERTSCHUK
Appeal 2016-004217
Application 12/987,9181
Technology Center 3600
Before JASON V. MORGAN, BRUCE R. WINSOR, and
AMBER L. HAGY, Administrative Patent Judges.
WINSOR, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the final rejection of
claims 23—32, which constitute all the claims pending in this application.
We have jurisdiction under 35 U.S.C. § 6(b). Claims 1—22 and 33—42 are
cancelled. App. Br. (Claims App’x) 30, 33.
We affirm.
1 The real party in interest identified by Appellants is Disney Enterprises,
Inc., which Appellants identify as a wholly owned subsidiary of The Walt
Disney Company. App. Br. 3.
Appeal 2016-004217
Application 12/987,918
STATEMENT OF THE CASE
Appellants’ disclosed “invention generally relates to . . . sell[ing]
entertainment tickets over a network. More particularly, the invention
relates to . . . collecting] and listing] entertainment ticket information from
multiple data sources, and facilitate[ing] the sales of entertainment tickets
over a network.” Spec. 12. Claim 23, which is illustrative, reads as
follows:
23. A computer-implemented method for displaying a
list of available entertainment offerings, the method
comprising:
receiving, over a network connection at a computer, a
plurality of data feeds from two or more providers, the data
feeds carrying data including entertainment identification
information relating to entertainment offerings for an
entertainment exhibition from the two or more providers;
processing, using a processor of the computer, the data
from the plurality of data feeds into a display listing provided
on a display device of the computer based on data importation
rules and in accordance with at least one user-selected criterion,
wherein said processing based on said data importation rules
includes formatting data of the plurality of data feeds from the
two or more providers such that the data is consistent with one
or more specified data formats;
providing to a user an option to purchase entertainment
included in the listing from each of the two or more providers;
and
responsive to a user selection from the listing input at the
computing device, directing the user to a provider associated
with the user selection;
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wherein the directing comprises loading information of
the provider at the computing device for purchasing the
entertainment.
Claims 23—32 stand rejected on the ground of nonstatutory double
patenting over claims 1—17 of Lambert et al. (US 7,870,040 B2; Jan. 11,
2011; hereinafter “Lambert ’040”). See Final Act. 7.
Claims 23—32 stand rejected under 35 U.S.C. § 101 as being directed
to non-statutory subject matter. See Final Act. 8—9.
Claims 23—27 and 29-32 stand rejected under 35 U.S.C. § 103(a)2 as
being unpatentable over McCall et al. (US 2002/0188522 Al; Dec. 12, 2002;
hereinafter “McCall”) and Stone et al. (US 6,873,969 B2; Mar. 29, 2005;
hereinafter “Stone”). See Final Act. 10—17.
Claim 28 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over McCall, Stone, and Garber et al. (US 4,905,163; Feb. 27,
1990; hereinafter “Garber”). See Final Act. 17—18.
Rather than repeat the arguments here, we refer to the Briefs (“App.
Br.” filed July 27, 2015; “Reply Br.” filed March 4, 2016) and the
Specification as amended (“Spec.” filed Jan. 10, 2011, amended Jan. 10,
2011, Mar. 9, 2012, and May 27, 2014) for the positions of Appellants and
the Final Office Action (“Final Act.” mailed Feb. 26, 2015) and Answer
(“Ans.” mailed Jan. 4, 2016) for the reasoning, findings, and conclusions of
the Examiner. Only those arguments actually made by Appellants have been
considered in this decision. Arguments that Appellants did not make in the
2 All prior art rejections are under the provisions of 35 U.S.C. in effect prior
to the effective date of the Leahy-Smith America Invents Act of 2011. Final
Act 2.
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Briefs have not been considered and are deemed to be waived. See
37 C.F.R. § 41.37(c)(l)(iv) (2014).
ISSUES
The dispositive issues presented by Appellants’ arguments are as
follows:
Does the Examiner err in rejecting claim 23 as not being patentably
distinct from the claims of Lambert ’040?
Does the Examiner err in rejecting claim 23 as being directed to patent
ineligible subject matter, i.e., an abstract idea?
Does the Examiner err in finding the combination of McCall and
Stone teaches or suggests the invention recited in claim 23?
ANALYSIS
Rejection for Nonstatutory Double Patenting
The Examiner finds as follows:
The subject matter claimed in the instant application is
fully disclosed in the [Lambert ’040] patent and is covered by the
patent since the patent and the application are claiming common
subject matter, as follows: essentially all of the subject matter in
the present claims is commonly claimed in the parent patent
7,870,040. The parent includes additional limitations but the
present claims would be anticipated or rendered obvious by those
claims. The present claims cover essentially the same subject
matter.
Final Act. 7 (emphasis added); see also Ans. 15. The Examiner further
explains that “the present claims contain no additional subject matter
relative to the patented claims” of Lambert ’040 (Ans. 15 (emphasis added)),
“the claim language is different in the present application than in the
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[Lambert ’040] patent and ... the present claim language is significantly
broader” (Ans. 19 (discussing the rejection under § 103(a)), and “[t]he
claims patented in the [Lambert ’040] patent include additional limitations”
(id.).
Appellants contend the Examiner has failed to meet the Office’s
burden to provide an adequate explanation of the differences between claim
233 and the claims of Lambert ’040 and an explanation of why the skilled
person would have found claim 23 to be obvious over the claims of Lambert
’040. App. Br. 12; see also Reply Br. 13. Appellants further argue claim 23
“includes claim language not found in the [Lambert ’040] claims and
removes claim language found in the [Lambert ’040] claims.” Reply Br 13.
We are not persuaded of error. First of all, as pointed out by the Examiner,
the Examiner has explained the findings and conclusions. See Ans. 15—16.
More particularly, the Examiner has found that there is no subject matter
found in claim 23 that is not also found in the claims of Lambert ’040 (App.
Br. 12: Reply Br. 13) and that differences in language between claim 23 and
the claims of Lambert ’040 render claim 23 broader than the claims of
Lambert ’040, but do not introduce any limitations not found in the claims of
Lambert ’040. We conclude this explanation meets the requirement that the
Examiner “notify the applicant. . ., stating the reasons for such rejection, . . .
together with such information and references as may be useful in judging of
the propriety of continuing the prosecution of his application,” 35 U.S.C.
§ 132(a); see also In re Jung, 637 F.3d 1356, 1363 (Fed. Cir. 2011).
3 We understand Appellants’ reference to claim 1 (App. Br. 12) to be a
typographical error.
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Secondly, Appellants assert that the language of claim 23 differs from
the language of the claims in Lambert ’040. Reply Br. 14. However,
Appellants do not point to any specific subject matter found in claim 23 (or
any other of the presently pending claims) that is not also found in the
claims of Lambert ’040. See Ans. 15 (“[Ajppellant could have presented a
quick and simple persuasive argument by merely identifying the additional
subject matter that is presently claimed.”); see generally App. Br. 11—13;
Reply Br. 12—13. Such conclusory attorney argument, without reference to
any supporting evidence in the record, has little probative value. Cf. In re
Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (“An assertion of what seems
to follow from common experience is just attorney argument and not the
kind of factual evidence that is required to rebut a prima facie case of
obviousness.”).
Appellants do not persuade us of error in the rejection of claim 23 for
obviousness-type nonstatutory double patenting. Accordingly, we sustain
the rejection of claim 23 and claims 24—32, which are argued together with,
or on the same basis as, claim 23
Rejection under 35 U.S.C. §101
The Examiner concludes claim 23 is directed to an abstract idea, i.e.,
the fundamental economic practice of collecting and listing “entertainment
exhibition information (i.e., movie show times) appearing in various
disparate sources, by implementing the old solution of gathering information
and consolidating it into common display outlet with a common format.”
Final Act. 8—9. The Examiner further concludes that “when considering the
elements and combinations of elements the claim(s) as a whole do not
amount to significantly more than the abstract idea itself.” Id. at 9.
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Therefore, the Examiner concludes, claim 23 is directed to patent-ineligible
subject matter. Id. at 8.
Appellants contend that, rather than being directed to an abstract idea,
claim 23 is “directed to an improvement in the technological field of
‘systems and methods that collect and list entertainment ticket information
from multiple data sources, and facilitate the sales of entertainment tickets
over a network.’” App. Br. 14 (quoting Spec. 12). Appellants analogize
claim 23 to the claims found to be patent-eligible in DDR Holdings, LLC v.
Hotels.com L.P., 773 F.3d 1245 (Fed. Cir. 2014). Appellants assert that, like
the claim considered in DDR, claim 23 is
likewise . . . directed to a solution that is necessarily rooted in
computer technology and additionally overcome[s] a problem
specifically arising in the realm of computer networks, i.e.,
formatting data of a plurality of entertainment data feeds from
the two or more providers such that the data is consistent with
one or more specified data formats.
App. Br. 16.
We agree with the Examiner.
Patent eligibility is a question of law that is reviewable de novo.
Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1333 (Fed. Cir. 2012). To be
statutorily patentable, the subject matter of an invention must be a “new and
useful process, machine, manufacture, or composition of matter, or [a] new
and useful improvement thereof.” 35 U.S.C. § 101. The Supreme Court has
held that there are implicit exceptions to the categories of patentable subject
matter identified in § 101, including (1) laws of nature, (2) natural
phenomena, and (3) abstract ideas. Alice Corp. Pty. Ltd. v. CLS BankInt 7,
134 S. Ct. 2347, 2355 (2014). Further, the Court has “set forth a framework
for distinguishing patents that claim [1] laws of nature, [2] natural
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phenomena, and [3] abstract ideas from those that claim patent-eligible
applications of those concepts.” Id., citing Mayo Collaborative Services v.
Prometheus Laboratories, Inc., 132 S. Ct. 1289 (2012). The evaluation
follows the two-part analysis set forth in Mayo: (1) determine whether the
claim is directed to a patent-ineligible concept, e.g., an abstract idea; and
(2) if an abstract idea is present in the claim, determine whether any element,
or combination of elements, in the claim is sufficient to ensure that the claim
amounts to significantly more than the abstract idea itself. See Alice, 134 S.
Ct. at 2355.
Initially, we note that claim 23 is directed to a “method,” i.e., a
“process,” which is one of the four classes of statutory subject matter. 35
U.S.C. § 101. We next look to the Mayo/Alice analysis to ascertain whether
claim 23 is directed to a judicial exception to the classes of statutory subject
matter.
Considering the first step of the Mayo/Alice analysis, Appellants’
invention is directed to making information about available entertainment
tickets in a single location and facilitating the sales of such tickets. Spec.
12. Claim 23 recites receiving data about entertainment offerings, putting
the information in a consistent format, allowing the user to select a ticket for
purchase, and directing the user to a ticket provider by presenting the
provider’s information to the purchaser. See App. Br. (Claims App’x) 30.
We note that claim 23 is not directed to specific computer or network
technology, but rather recites generalized steps relating to a process for
which computers and a network are used in their ordinary capacities as tools.
Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335—36 (Fed. Cir. 2016)
(“[T]he first step in the Alice inquiry . . . asks whether the focus of the
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claims is on the specific asserted improvement in computer capabilities
. . . or, instead, on a process that qualifies as an ‘abstract idea’ for which
computers are invoked merely as a tool.”). We agree with the Examiner that
[the] claimed invention is not a technical solution to a technical
problem because it does not solve a problem arising from the
technical environment of computer networks. Instead[,] it
merely addresses the old problem of entertainment exhibit
information (i.e., movie show times) appearing in various
disparate sources, by implementing the old solution of gathering
information and consolidating it into common display outlet with
a common format. Then it instructs a computer to perform the
method in a computer network environment. This is a
fundamental economic practice[, which is]. . . an abstract idea.
Final Act. 8—9.
Appellant contend as follows:
[The Examiner’s] analysis omits consideration of the explicit
claim language, i.e., “wherein said processing based on said data
importation rules includes formatting data of the plurality of data
feeds from the two or more providers such that the data is
consistent with one or more specified data formats,” Claim 23,
which directly addresses a problem arising from the technical
environment of computer networks.
App. Br. 15—16.
The process described in claim 23 is no more than a computerization
of the well-established fundamental economic practice of acting as an
advertiser or broker for products, in this case entertainment tickets. Indeed,
but for the use of computers and a network, the practice described in claim
23 is the same as that historically performed in compiling and distributing
the consolidated movie listings in print newspapers. See Final Act. 8. The
conversion of information from one format to another and the elimination of
duplicates is an old and routine practice, often done by hand. See id.
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Appellants’ reliance on DDR Holdings, LLC v. Hotels.com L.P., 773 F.3d
1245 (Fed. Cir. 2014), is misplaced. See App. Br. 16—19; Ans. 17—19. The
fact that the information is in electronic form and the conversion is done by
a computer does not lead to the conclusion that “the claimed solution is
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. Unlike the claim at issue in DDR, claim 23 does not “override the
routine and conventional sequence of events,” id. at 1258, but merely uses
computers and networks to automate a well-known fundamental economic
practice.
Comparing claim 23 to the claims at issue in Alice (intermediated
settlement), Bilski v. Kappos, 561 U.S. 593, 609 (2010) (hedging risk), and
buySAFE, Inc. v. Google, Inc., 765 F,3d 1350 (Fed. Cir. 2014) (contractual
arrangement guarantees), we conclude claim 1 is directed to a fundamental
economic practice of “ancient lineage,” buySAFE, 765 F.3d at 1355, i.e., an
abstract idea. See Enfish, 822 F.3d at 1334 (it is “sufficient to compare
claims at issue to those claims already found to be directed to an abstract
idea in previous cases”).
Turning to the second step of the Mayo/Alice analysis, we analyze the
claim as a whole to determine whether any element, or combination of
elements, is sufficient to ensure that the claim amounts to significantly more
than the exception. Appellants’ arguments focus on the step of
processing, using a processor of the computer, the data
from the plurality of data feeds into a display listing provided
on a display device of the computer based on data importation
rules and in accordance with at least one user-selected criterion,
wherein said processing based on said data importation rules
includes formatting data of the plurality of data feeds from the
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two or more providers such that the data is consistent with one
or more specified data formats,
App. Br. (Claims App’x) 30. However, this recitation merely describes
using a computer to translate two streams of incoming data into a consistent
format, displaying the data in the consistent format, and using a user-
selected criterion to select which data to display, all of which are routine
steps performed by generic computers. See Ans. 17 (citing Digitech Image
Techs., LLCv. Electronics for Imaging, Inc., 758 F.3d 1344, 1351 (Fed. Cir.
2014)).
Each of the steps of claim 23 merely recites using conventional
computer technology to perform entirely conventional steps. In other words,
the claim merely recites the abstract idea and says “apply it” using computer
technology. See Mayo, 132 S. Ct. at 1294; Gottschalkv. Benson, 409 U.S.
63, 67 (1972). 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 2358 (concluding claims
“simply instructing] the practitioner to implement the abstract idea of
intermediated settlement on a generic computer” not patent eligible); see
also Ultramercial, Inc. v. Hulu, LLC, 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
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Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1333—34 (Fed. Cir. 2012)
(“[sjimply adding a ‘computer aided’ limitation to a claim covering an
abstract concept, without more, is insufficient to render [a] claim patent
eligible” (internal citation omitted)).
Appellants do not persuade us of error in the rejection of claim 23
under 35. U.S.C. § 101. Accordingly, we sustain the rejection of claim 23
and claims 24—32, which are argued together with, or on the same basis as,
claim 23.
Rejection under 35 U.S.C. § 103(a)
The Examiner finds the combination of McCall and Stone teaches all
of the limitations of claim 23, and concludes as follows:
Therefore it would have been obvious to one of ordinary
skill in the art at the time of the invention to modify the method
of McCall to include wherein the exhibition information pertains
to future events and the permission to access comprises a ticket
for a future event, as taught by Stone because applicants have not
disclosed that the added features solve any stated problem or are
for any particular purpose. Since each element and its function
are shown in the prior art the difference between the claimed
subject matter and the prior art rests not on any individual
element or function but in the very combination itself.
Furthermore the combination solved no long felt need, and
produced no unexpected results. Incorporating cumulative
known features is additionally obvious to one of ordinary skill in
the art because doing so increases commercial use of a method
by attracting users that previously might have chosen between
one of the previously known methods.
Final Act. 16—17.
Appellants “disagree^ with the [Examiner’s] analysis regarding the
combination of McCall and Stone.” App. Br. 22. More particularly,
Appellants “disagree^ with the Office’s statement that ‘[s]ince each element
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and its function are shown in the prior art the difference between the claimed
subject matter and the prior art rests not on any individual element or
function but in the very combination itself.’” App. Br. 24 (quoting Final
Act. 16).
We are persuaded of error in the rejection of claim 23. ‘“[R]ejections
on obviousness grounds cannot be sustained by mere conclusory statements;
instead, there must be some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness. KSR Int 7
Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (quoting In re Kahn, 441 F.3d
977, 988 (Fed. Cir. 2006)). The Examiner’s conclusion of obviousness boils
down to a statement that the combination of McCall and Stone would have
been obvious because all of the features of claim 23 are found in McCall and
Stone. However, as our reviewing court has stated, demonstrating
“[ojbviousness requires more than a mere showing that the prior art includes
separate references covering each separate limitation in a claim under
examination,” it “requires the additional showing that a person of ordinary
skill at the time of the invention would have selected and combined those
prior art elements in the normal course of research and development to yield
the claimed invention.” Unigene Labs., Inc. v. Apotex, Inc., 655 F.3d 1352,
1360 (Fed. Cir. 2011) (citing KSR, 550 U.S. at 418, 421).
To the extent the Examiner concludes that the combination of McCall
and Stone is “[t]he combination of familiar elements according to known
methods [that] is likely to be obvious when it does no more than yield
predictable results,” KSR, 550 U.S. at 416, it is not clear from the
Examiner’s findings or from the McCall and Stone references themselves,
that the combination ‘“simply arranges old elements with each performing
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the same function it had been known to perform’ and yields no more than
one would expect from such an arrangement.” Id. at 417 (quoting Sakraida
v. AgPro, Inc., 425 U.S. 273, 282 (1976)).
Furthermore, in the absence of “some articulated reasoning with some
rational underpinning to support the legal conclusion of obviousness,” KSR,
550 U.S. at 418, we find the Examiner’s discussion of secondary
considerations of unobviousness premature at best. See App. Br. 23. We
note that, in this proceeding, Appellants have not submitted, and do not rely
on, evidence or argument related to such secondary considerations.
We note that Stone’s method is directed to “the sale of tickets, passes,
admission documents, or reserved services” (Stone, col. 2,11. 52—53),
whereas McCall’s method is directed to “collecting, analyzing, consolidating
and delivering consolidated and enhanced data from a plurality of sources
relating to a current event” (McCall Abstract). The Examiner provides no
evidentiary support or reasoning for the conclusory statement that combining
the features of McCall and Stone would “increase^ commercial use of a
method by attracting users that previously might have chosen between
[McCall’s and Stone’s] . . . methods” (Final Act. 17), or, indeed, that users
of McCall’s method for buying tickets would instead choose Stone’s method
for collecting data about current events, or the converse.
Appellants persuade us of error in the rejection of claim 23 under 35
U.S.C. § 103(a). Accordingly, we do sustain the rejection of (1) claim 23,
(2) independent claims 31 and 32, which are rejected on substantially the
same basis as claim 23 (see Final Act. 10-17), and (3) claims 24—30, which
depend, directly or indirectly, from claim 23.
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CONCLUSION
On the record before us, (1) we sustain the rejection of claims 23—32
on the ground of nonstatutory double patenting; and (2) we sustain the
rejection of claims 23—32 under 35 U.S.C. § 101; but (3) we do not sustain
the rejections of claims 23—32 under 35 U.S.C. § 103(a).
DECISION
The rejection of each of the appealed claims is sustained on at least
one of the grounds specified in the rejection appealed from. Therefore, the
decision of the Examiner to reject claims 23—32 is affirmed. See 37 C.F.R.
§ 41.50(a)(1).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R.
§§ 41.50(f), 41.52(b).
AFFIRMED
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