Ex Parte Law et al

Patent Trial and Appeal Board

May 10, 2018

12252663 (P.T.A.B. May. 10, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/252,663 10/16/2008
49845 7590 05/14/2018
SCHWEGMAN LUNDBERG & WOESSNER/EBAY
P.O. BOX 2938
MINNEAPOLIS, MN 55402
Philip Law
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.
2043.575US 1 7841
EXAMINER
OUELLETTE, JONATHAN P
ART UNIT PAPER NUMBER
3629
NOTIFICATION DATE DELIVERY MODE
05/14/2018 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 PHILIP LAW, ROLF SKYBERG, TRISHA LEE OKUBO,
CROON CHONG, and YUAN DER H0 1
Appeal2017-002174
Application 12/252,663
Technology Center 3600
Before CAROLYN D. THOMAS, IRVINE. BRANCH, and
SHARON PENICK, Administrative Patent Judges.
THOMAS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants seek our review under 35 U.S.C. § 134(a) from the
Examiner's Final Rejection of claims 1, 5-14, 16, and 20-28, all the pending
claims in the present application. Claims 2--4, 15, 17, and 18 are canceled.
See Claims Appendix. We have jurisdiction over the appeal under 35 U.S.C.
§ 6(b ).
We AFFIRM.
1 The Appellants name eBay, Inc. as the real party in interest. App. Br. 3.
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Application 12/252,663
The present invention relates generally to creating and maintaining a
commerce network data structure. See Abstract.
Claim 1 is illustrative:
1. A computerized method comprising:
receiving, at a commerce network server computer
from a first user, transaction information related to a business
relationship between the first user and a business entity, the
transaction information comprising price information
concerning a completed transaction between the first user and
the business entity, the completed transaction having been
completed prior to the receiving of the transaction information;
verifying, by the commerce network server
computer in response to the receiving of the transaction
information, the business relationship between the first user and
the business entity using the transaction information, the
verifying of the business relationship comprising receiving a
confirmation of the business relationship from the business
entity;
creating, by the commerce network server
computer in response to the verifying of the business
relationship, a commerce network data structure including
creating a link between a first node and a second node, the first
node representing the first user, the second node representing
the business entity, and the link representing the business
relationship;
receiving, at a commerce network server computer
from a second user, a communication including a request for
the transaction information related to the business relationship,
the second user being different from the first user; and
responsive to the receiving of the communication
at the commerce network server computer, accessing the
commerce network data structure using the commerce network
server computer to automatically retrieve the transaction
information and to provide the second user with a response
from the commerce network server computer, the response
comprising the transaction information, the response to be
presented by the second user to the business entity as evidence
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of the price information concerning the completed transaction
between the first user and the business entity in association with
a proposed business transaction between the second user and
the business entity.
Appellants appeal the following rejection:
Claims 1, 5-14, 16, and 20-28 are rejected under 35 U.S.C.
§ 101 because the claimed invention is directed to non-statutory subject
matter (Final Act. 2-3).
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, 1075 (BPAI 2010)
(precedential).
ANALYSIS
Re} ection under § 101
Issue: Did the Examiner err in finding that the claims are directed to
non-statutory subject matter?
Alice Corp. Pty. Ltd. v. CLS Bank International, 134 S. Ct. 2347
(2014) identifies a two-step framework for determining whether claimed
subject matter is judicially-excepted from patent eligibility under § 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 this regard, with respect to independent method claim 1, and
similarly, non-transitory computer-readable medium claim 24 and system
claims 16 and 23, the Examiner finds that the claims are directed to an
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abstract idea which is "fundamental economic/business practices" (Final
Act. 2-3). The Examiner adds that the claims are directed to "'price-
matching' using verified transaction data by, Receiving data ... ,
Correlating data with saved data ... , Receiving additional query data ... ,
Correlating received query data with saved data, [and] Providing
response/transaction data" (Ans. 2-3), which is equivalent to judicial
examples of abstract ideas pertaining to at least "[ c ]omparing new and stored
information and using rules to identify options ... and/or [c]ollecting and
comparing known information" (id. at 3).
Appellants challenge said findings on four grounds: (a) the Examiner
merely makes conclusory statements that lacks evidentiary support; (b) the
Examiner's findings are not tied to the actual claim language; (c) the
claimed invention is rooted in computer technology; and ( d) the claims do
not preempt the abstract idea.
Regarding argument (a), Appellants contend "[t]he Examiner has
provided none of the explanations or analysis required" for making a
determination under Alice (App. Br. 14) because he/she "merely states
conclusion" (id. at 15) and "the Examiner has not provided evidence
sufficient to establish a prima facie case ... a rejection by an Examiner
under§ 101 without evidence amounts to the taking of Official Notice ...
[ and] adequate documentary evidence from the Examiner is required to
sustain the§ 101 rejection" (Reply Br. 2).
Although Appellants highlight a previous Board decision which
presumably noted that "facts and evidence" must "support the finding[ s ]",
i.e., Ex parte Renald Poisson, Appeal No. 2012-011084 (PTAB Feb. 27,
2015), and request that we uphold the same (see Reply Br. 3), as a matter of
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course, what a different panel did in a different situation under a different set
of facts has little bearing on how this case should be disposed of. While we
do not consider Ex parte Renald Poisson controlling, that panel's
consideration of evidence in making a determination under the first step of
the Alice framework has merit. A similar approach was taken in Apple, Inc.
v. Ameranth, Inc., 842 F.3d 1229 (Fed. Cir. 2016). But these cases do not
stand for the proposition that Examiners must provide evidentiary support in
every case before a conclusion can be made that a claim is directed to an
abstract idea. There is no such requirement. See, e.g., para. IV "July 2015
Update: Subject Matter Eligibility" to 2014 Interim Guidance on Subject
Matter Eligibility (2014 IEG), 79 Fed. Reg. 74618 (Dec. 16, 2014) ("The
courts consider the determination of whether a claim is eligible (which
involves identifying whether an exception such as an abstract idea is being
claimed) to be a question of law.[] Accordingly, courts do not rely on
evidence that a claimed concept is a judicial exception, and in most cases
resolve the ultimate legal conclusion on eligibility without making any
factual findings" ( emphasis added)). Evidence may be helpful in certain
situations where, for instance, facts are in dispute. But it is not always
necessary.
In any case, the Examiner highlighted some of these abstract concepts,
i.e., comparing new and stored information and using rules to identify
options; using categories to organize, store and transmit data; and/or
collecting and comparing known information (see Ans. 3). We find that the
Examiner's cogent analysis relying on judicial examples (id.), albeit without
citing the specific cases, shows the Examiner provided adequate basis for
making the rejection. In fact, Appellants recognized one such example as
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stemming from SmartGene, Inc. v. Advanced Biological Laboratories, SA
(see App. Br. 16).
We note that claim 1 recites five steps: (1) receiving transaction
information related to business relationship; (2) verifying the business
relationship; (3) in response to verifying, creating a commerce network data
structure; (4) receiving a request for transaction information; and
( 5) accessing the commerce network data structure to retrieve the transaction
information. These five steps present a scheme for providing transaction
information, e.g., price paid, to a second user for price-matching purposes.
Information collection and analysis, including when limited to
particular content, is within the realm of abstract ideas. See, e.g., Elec.
Power Grp. LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016)
(holding that "collecting information, analyzing it, and displaying certain
results of the collection and analysis" are "a familiar class of claims
'directed to' a patent-ineligible concept"); FairWarning IP, LLC v. Iatric
Sys., Inc., 839 F.3d 1089, 1093-94 (Fed. Cir. 2016); Internet Patents Corp.
v. Active Network, Inc., 790 F.3d 1343, 1349 (Fed. Cir. 2015); Digitech
Image Techs., LLC v. Elecs.for Imaging, Inc., 758 F.3d 1344, 1351 (Fed.
Cir. 2014); CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366,
1370 (Fed. Cir. 2011). Because the claims are directed to collecting
information, analyzing it, correlating it, and providing it to users, we agree
with the Examiner that claim 1 is directed to an abstract idea.
Regarding argument (b ), Appellants contend that the Examiner's
findings lack "1) any tie to the actual claim language ... and 2) any
explanation of why ... a simplification of the actual claim recitations, is a
mere abstract idea" (App. Br. 16) because "the claims do significantly more
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than compare data and use rules to identify options" (id.). We disagree with
Appellants.
It is evident that the Examiner considered all the limitations in the
claim and the Examiner's analysis is indeed tethered to actual claim
language (see Final Act. 2-3). We find the Examiner properly and
reasonably found that claim 1 is directed to "fundamental economic/business
practices" (id. at 3) and that that is an abstract idea. The Examiner
condensed it to "price-matching" (Ans. 2), but this is simply a higher level
of abstraction. Cf Apple, Inc., 842 F.3d at 1240-41 ("An abstract idea can
generally be described at different levels of abstraction. As the Board has
done, the claimed abstract idea could be described as generating menus on a
computer, or generating a second menu from a first menu and sending the
second menu to another location. It could be described in other ways,
including, as indicated in the specification, taking orders from restaurant
customers on a computer.")
Under the first step of the Alice framework, "[ 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. Whichever way the concept is
described, we do not see that Appellants have adequately shown that claim 1
is not directed to an abstract idea. Just because the claim is more detailed
than the phrase the Examiner uses as an articulation of the abstract idea to
which he/she found the claim to be directed to is an insufficient reason to
persuasively argue that claim 1 is not directed to an abstract idea.
Regarding argument ( c ), Appellants contend that "[ s ]earching [ and
analysis of data are] a technical area[ s]. . . . They solve problems deeply
rooted in computer technology" (App. Br. 19) and that the independent
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claims "are technical in nature" (id. at 20) because "the claims are more like
DDR Holdings" (id. at 21 ). We disagree with Appellants.
In DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1259
(Fed. Cir. 2014), the subject claim was held patent-eligible because it
encompassed "an inventive concept" for resolving a "particular Internet-
centric problem." In contrast, we find Appellants' computerized method
( claim 1) does not provide a solution "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. Because we find all claims
on appeal merely use a generic computer or processor as a tool which is used
in the way a computer normally functions, we conclude claims 1, 5-14, 16,
and 20-28 fail to impart any discernible improvement upon the computer or
processor, nor do Appellants' claims solve "a challenge particular to the
Internet" as considered by the court in DDR, 773 F.3d at 1256-57. Thus, we
conclude none of Appellants' claims are like the claim held patent-eligible
by the court in DDR, in which the claimed invention was directed to the
"challenge of retaining control over the attention of the customer in the
context of the Internet," such that:
Instead of the computer network operating in its normal,
expected manner by sending the website visitor to the third-
party website that appears to be connected with the clicked
advertisement, the claimed system generates and directs the
visitor to the above-described hybrid web page that presents
product information from the third-party and visual "look and
feel" elements from the host website.
DDR, 773 F.3d at 1258-59. Thus, we find unavailing Appellants'
arguments that "the claims are more like DDR Holdings" (App. Br.
21 ), given that no convincing "inventive concept" for resolving a
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"particular Internet-centric problem" is identified by Appellants.
Thus, we agree with the Examiner that "the alleged improvement to
the technical field appears to address the abstract idea itself' (Ans. 4).
Regarding argument ( d), Appellants contend that "the claims do not
preempt the making, using, and selling of the basic tools of scientific and
technological work for at least the reason that the claims do not preempt the
abstract idea of accessing new and old information and providing options"
(App. Br. 22).
Although pre-emption "might tend to impede innovation more than it
would tend to promote it, 'thereby thwarting the primary object of the patent
laws"' (Alice, 134 S. Ct. at 2354 (citing Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 132 S. Ct. 1289, 1293 (2012))), "the absence of
complete preemption does not demonstrate patent eligibility" (Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015)).
Moreover, because we find the claimed subject matter covers patent-
ineligible subject matter, the pre-emption concern is necessarily addressed.
As noted by the Examiner, "pre-emption is merely one factor" (Ans. 3).
"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 now tum to the second step of the Alice framework: "a 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."' Alice, 134 S. Ct. at 2355
(citing Mayo Collaborative Servs., 132 S. Ct. at 1294).
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Appellants contend that "a finding of novel and non-obvious subject
matter is relevant to a pragmatic analysis of§ 101 in search for an 'inventive
concept"' (App. Br. 23) because "those differences that serve to make the
claims non-obvious should also serve to make the claims 'something more'
than the mere recitation of an alleged abstract idea" (id.) ( emphasis omitted).
The Examiner finds that "[ t ]he claims do not recite limitations that are
'significantly more' ... [because] [ t ]he limitations are merely instructions to
implement the abstract idea on a computer and require no more than a
generic computer to perform generic computer functions" (Final Act. 3).
The Examiner further finds, and we agree, that "the determinations of
patentability under[§§] 101 and 103 are separate" (Ans. 3). See Intellectual
Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1315 (Fed. Cir. 2016).
Indeed, "[t]he 'novelty' of any element or steps in a process, or even
of the process itself, is of no relevance in determining whether the subject
matter of a claim falls within the § 101 categories of possibly patentable
subject matter." Diamond v. Diehr, 450 U.S. 175, 189--90 (1981); see also
Mayo, 132 S. Ct. at 1303---04 (rejecting "the Government's invitation to
substitute§§ 102, 103, and 112 inquiries for the better established inquiry
under § 101 "). Here, the jury's general finding that Symantec did not prove
by clear and convincing evidence that three particular prior art references do
not disclose all the limitations of or render obvious the asserted claims does
not resolve the question of whether the claims embody an inventive concept
at the second step of Mayo/Alice.
Furthermore, 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 2359
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( concluding claims "simply instruct[ ing] 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);
Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1333-34 (Fed. Cir. 2012)
("[ s ]imply 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)).
Because Appellants' independent claims 1, 16, 23, and 242 are
directed to a patent-ineligible abstract concept and do not recite something
"significantly more" under the second prong of the Alice analysis, we sustain
the Examiner's rejection of these claims as well as respective dependent
claims 5-14, 20-22, and 25-28 under 35 U.S.C. § 101 as being directed to
non-statutory subject matter in light of Alice and its' progeny.
For the foregoing reasons, Appellants' contentions are unpersuasive
as to error in the rejection under 35 U.S.C. § 101.
2 Alice also confirmed that if a patent's systems claims are no different in
substance from its method claims, they will rise and fall together. Alice, 134
S. Ct. at 2360. The same was true of the Alice patent's media claims. Id.
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DECISION
We affirm the Examiner's§ 101 rejection.
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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