Ex Parte Langhammer

Patent Trial and Appeal Board

Nov 14, 2018

12040556 (P.T.A.B. Nov. 14, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/040,556 02/29/2008
26875 7590 11/16/2018
WOOD, HERRON & EV ANS, LLP
2700 CAREW TOWER
441 VINE STREET
CINCINNATI, OH 45202
UNITED ST A TES OF AMERICA
FIRST NAMED INVENTOR
Michael Jay Langhammer
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.
EJEW-02DV 9617
EXAMINER
POND, ROBERT M
ART UNIT PAPER NUMBER
3684
NOTIFICATION DATE DELIVERY MODE
11/16/2018 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):
usptodock@whe-law.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL J. LANGHAMMER
Appeal2017-008588
Application 12/040,556
Technology Center 3600
Before TERRENCE W. McMILLIN, KARA L. SZPONDOWSKI, and
SCOTT B. HOWARD, Administrative Patent Judges.
SZPONDOWSKI, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C § 134(a) of the
Examiner's Final Rejection of claims 1-7 and 9, constituting all claims
currently pending in the application. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We AFFIRM.
Appeal2017-008588
Application 12/040,556
STATEMENT OF THE CASE
Appellant's invention is directed to "management information
systems that facilitate retail sales of goods to consumers." Spec. ,r 2. Claim
1, reproduced below, is representative of the claimed subject matter:
1. A system for merchant-affiliated direct marketing at a
place of business of a retail merchant, comprising:
a server comprising a processor and data storage, the data
storage maintaining an identification of products potentially for
sale, the server under the control of a wholesale organization
independent of said retail merchant, at a location which is
geographically remote from said place of business of said retail
merchant,
a remote computer system comprising a processor and
communications connection at said place of business of said
retail merchant, under control of a customer of said retail
merchant at said place of business of said retail merchant, the
remote computer system communications connection
permitting the customer to obtain information regarding
products for retail sale from said server,
said server responding to the remote customer's request
to purchase a product by consummating a sale transaction for
the product between the wholesale organization, the retail
merchant, and the customer, and
a wholesale facility under the control of the wholesale
organization, within which one or more products for retail sale
from said server are stored,
wherein said server, while permitting the remote
customer to obtain information regarding products for retail
sale from the server, shields the identity of the wholesale
organization at said wholesale facility from the customer.
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Application 12/040,556
REJECTION
Claims 1-7 and 9 stand rejected under 35 U.S.C. § 101 because the
claimed invention is directed to non-statutory subject matter. Ans. 2.
ANALYSIS
35 US.C. § 101 Rejection
Alice Corp. Pty. Ltd. v. CLS Banklnt'l, 134 S. Ct. 2347 (2014),
identifies a two-step framework for determining whether claimed subject
matter is judicially excepted from patent eligibility under 35 U.S.C. § 101.
In the first step, "[ w ]e must first determine whether the claims at issue are
directed to a patent-ineligible concept." Alice, 134 S. Ct. at 2355.
The Examiner determines the claimed invention is directed to a
"system that manages a marketing process" and more specifically to the
abstract idea of "direct marketing at a place of business," which is "both a
fundamental economic practice and a method of organizing human activity."
Ans. 3.
Appellant argues the claimed invention is "directed to a specific
process requiring the use of specifically programmed and configured
computer hardware, at specific geographic locations," and the claimed
system is "a geographically grounded system." App. Br. 4. According to
Appellant, the claimed invention is not marketing, but is instead "a specific
computerized process that requires the use of computer system specifically
programmed for its implementation." App. Br. 4.
We are not persuaded by Appellant's arguments and agree with the
Examiner that the claims are directed to an abstract idea. We agree with the
Examiner's determination that the claimed invention is directed to the
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Application 12/040,556
"distribution of an 'identification of products potentially for sale,"' which is
"a marketing process" and "sales process," and, therefore, a fundamental
economic practice. Ans. 3, 7-8; see Spec ,r 20 ("provid[ing] a merchant-
affiliated direct wholesale marketing and fulfillment system"). Moreover,
we also agree with the Examiner's determination that the claimed invention
is directed to "organizing human activity by permitting the customer at the
place of business to use a computer at the place of business to request
product information from a server maintaining the product information."
Ans. 3; see Spec ,r 18 ("facilitate catalog sales by merchants at retail
locations, by improving the delivery of catalog information to consumers
visiting retail locations"). In addition, the claimed invention may be
performed by a human using pen and paper (i.e., obtaining and providing
product information and performing sales transactions). See CyberSource,
654 F.3d at 1373 ("a method that can be performed by human thought alone
is merely an abstract idea and is not patent-eligible under§ 101."). Such
mental processes remain unpatentable even when performed by a computer.
Id. at 1375.
We agree with the Examiner that the claimed invention, similar to the
claims in Apple v. Ameranth, "communicates a product catalog to a remote
computer" and is "for customer consumption at a remote computer device."
Ans. 9; see Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240-1241 (Fed.
Cir. 2016) ("generating a second menu from a first menu and sending the
second menu to another location" and "taking orders from restaurant
customers on a computer" are abstract ideas). Moreover, the claimed
invention is also directed to a system that stores data at a location (i.e.,
collecting data) and permits obtaining the data at a different location (i.e.,
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Appeal2017-008588
Application 12/040,556
recognizing data and storing the recognized data). See Content Extraction
and Transmission LLC v. Wells Fargo Bank, Nat. Ass 'n, 776 F.3d 1343
(Fed. Cir. 2014) ("The concept of data collection, recognition, and storage is
undisputedly well-known" and "humans have always performed these
functions").
In the second step of Alice, we "consider 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, 134 S. Ct. at 2355 (quoting Mayo Collaborative
Services v. Prometheus Laboratories, Inc., 566 U.S. 66, 78-79 (2012)). In
other words, the second step is to "search for an 'inventive concept' - i.e., an
element or combination of elements that is 'sufficient to ensure that the
patent in practice amounts to significantly more than a patent upon the
[ineligible concept] itself."' Id. (alteration in original) (quoting Mayo, 566
U.S. at 72-73).
The Examiner determines the additional elements in the claims ( e.g., a
server, remote computer system, and wholesale facility) execute in a manner
"routinely and conventionally expected of these elements." Ans. 4.
According to the Examiner, these elements "undertake their roles in
performance of their activities according to their generic functionalities
which are well-understood, routine and conventional." Ans. 4--5. The
Examiner further concludes the claims are not directed to any specific
improvement or computer functionality, but rather to the use of conventional
or generic technology in a well-known environment. See Ans. 9-10.
Appellant argues the claimed invention is "an important enhancement
to known ways of doing business." Reply Br. 2. Specifically, Appellant
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Application 12/040,556
argues the claimed invention is "specifically intended to compete with
generic computerized online shopping by combining a geographically
anchored, in-store experience with the large selection and immediacy
possible with computerized browsing." Id. According to Appellant, the
claimed invention is not directed to a generic sales process, but is instead
tailored to commercial needs of retailers including masking the identity of
the merchant. See Reply Br. 3.
We are not persuaded by Appellant's argument and agree with the
Examiner's findings and conclusions. See Ans. 4--5, 9-10. Appellant has
not adequately explained how or provided persuasive evidence to show why
the claims add meaningful limits to practicing the abstract idea. Appellant's
arguments focus on the geographic location of the server and the computer
system, however, Appellant does not direct our attention to any evidence in
the Specification that the claimed invention improves the technological
infrastructure or functioning of the computer as opposed to the abstract idea
itself. The claims are not directed to a "technical solution"; rather, they are
directed to a business solution that uses conventional computer components
for speed or convenience. See, e.g., Intellectual Ventures I LLC v. Capital
One Bank (USA), 792 F.3d 1363, 1370 (Fed. Cir. 2015) ("[M]erely adding
computer functionality to increase the speed or efficiency of the process
does not confer patent eligibility on an otherwise abstract idea.").
Therefore, we agree with the Examiner that the claims do not improve
another technology or technical field, or functioning of the computer itself,
and do not have meaningful limitations beyond generally linking use of an
abstract idea to a technological environment. See Ans. 9-10. We further
agree with the Examiner that the claimed invention is similar to the patent-
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ineligible claims in Apple v. Ameranth. Ans. 9; see Apple, 842 F.3d at 1241
( claims that "do not claim a particular way of programming or designing the
software to create menus that have these features, but instead merely claim
the resulting systems" are "directed to certain functionality" and "not
directed to a specific improvement in the way computers operate.").
Appellant argues the present claims are similar to the claims in
Trading Technologies International, Inc. v. CQG, Inc., 675 F. App'x 1001
(Fed. Cir. 2017), because the claims "are directed to a specific improvement
to the way computers are geographically positioned and used for online
shopping and purchase of goods" and "require specific functionality of the
shopping system that is specifically directed to the problem of enabling
traditional geographically grounded 'brick-and-mortar' retailers to compete
with online shopping." Reply Br. 4. However, in Trading Technologies, the
"claimed subject matter is 'directed to a specific improvement to the way
computers operate,"' and "imparts a specific functionality . . . 'directed to a
specific implementation of a solution to a problem in the software arts."'
Trading Technologies, 675 F. App'x at 1006. Appellant does not explain
how the claimed steps, performed by the claimed system, including storing
and providing product data to a remote location, and consummating a sale
transaction for a product while shielding the identity of the wholesale
organization, provides a specific improvement to the way computers operate
or a problem in the software arts.
Moreover, the Examiner finds the present claims are similar to the
claims in In re TL! Communications LLC Patent Litigation, 823 F.3d 607
(Fed. Cir. 2016). Ans. 9--10. Specifically, the Examiner determines the
present claims recite "physical components that provide a generic
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environment in which to carry out the abstract idea" and are "not directed to
a specific improvement to machine (server or remote computer)
functionality." Ans. 9. According to the Examiner, the claimed "remote
computer system residing at the retail merchant's place of business behaves
as expected" and the claimed "server fails to add an inventive concept
because it is simply a generic device that 'administers' a product catalog,"
and therefore the "recited physical components behave exactly as expected
according to their ordinary use." Ans. 10. Appellant does not rebut the
Examiner's findings.
The claims, when viewed as a whole, perform conventional computer
processing functions ( obtaining, storing, and processing data) that courts
have routinely found insignificant to transform an abstract idea into a patent-
eligible invention. See Alice, 134 S. Ct. at 2360. As such, the claims
amount to nothing significantly more than an instruction to implement the
abstract idea on a generic computer - which is not enough to transform an
abstract idea into a patent-eligible invention. See Alice, 134 S. Ct. at 2360.
Accordingly, we sustain the Examiner's 35 U.S.C. § 101 rejection of
claims 1-7 and 9.
DECISION
The Examiner's 35 U.S.C. § 101 rejection of claims 1-7 and 9 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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