Ex Parte Leventhal

Patent Trial and Appeal Board

Apr 9, 2018

10755569 (P.T.A.B. Apr. 9, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
101755,569 01112/2004 Jeffrey P. Leventhal
27557 7590 04/11/2018
BLANK ROME LLP
1825 Eye Street NW
WASHINGTON, DC 20006-5403
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.
123579.0105 9161
EXAMINER
VETTER, DANIEL
ART UNIT PAPER NUMBER
3628
NOTIFICATION DATE DELIVERY MODE
04/11/2018 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):
Belay@blankrome.com
W ashingtonDocketing@blankrome.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JEFFREY P. LEVENTHAL
Appeal2017-000342 1
Application 10/755,5692
Technology Center 3600
Before JOSEPH A. FISCHETTI, NINA L. MEDLOCK, and
PHILIP J. HOFFMANN, Administrative Patent Judges.
MEDLOCK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 1-12, 14--27, 29, 30, and 37--45. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.
1 Our decision references Appellant's Appeal Brief ("Br.," filed March 3,
2016), and the Examiner's Answer ("Ans.," mailed July 27, 2016) and Final
Office Action ("Final Act.," mailed February 27, 2015).
2 Appellant identifies Onforce, Inc. as the real party in interest. Br. 3.
Appeal2017-000342
Application 10/755,569
CLAIMED INVENTION
Appellant's claimed invention "relates generally to a system and
method for managing requests for services" (Spec. 1, 11. 11-12).
Claims 1, 15, and 3 0 are the independent claims on appeal. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A third party system for managing service requests
compnsmg:
a system memory storing executable instructions; and
a processing unit, in communication with the system
memory, for executing the instructions, wherein executing the
instructions on the processing unit causes the third party system
to perform steps comprising:
populating a registry with a plurality of service
providers;
initiating an electronic transfer of funds from an
account of a service requestor to an account maintained by
the third party system based on at least one of a request
and authorization from the service requestor;
creating a work order from a service request
received from the service requestor, the work order
specifying a needed service and a spend limit for the
needed service;
routing the work order to one or more service
providers selected from the registry for the purpose of
having one or more of the selected service providers
indicate an acceptance of at least a portion of the needed
service;
providing functionality for the one or more service
providers selected from the registry to request from the
service requestor an increase in the spend limit when the
one or more service providers must obtain additional
resources to complete the work order, the request for the
increase in the spend limit being made via message
exchanges through the third party system;
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providing functionality for the service requestor to
authorize the requested increase in the spend limit, to
agree that the work order prior to the increase in the spend
limit is completed for purposes of accounting, and to issue
a further service request for the purpose of having the
service completed in actuality;
assigning at least a portion of the needed service to
an assigned service provider selected from the registry;
annotating acceptance, assignment, and completion
of the accepted portion of the needed service; and
initiating an electronic transfer of at least a portion
of the funds in the account maintained by the third party
system to an account of the assigned service provider upon
receipt of the annotated acceptance, assignment, and
completion and based on at least one of a request and
authorization from the service requestor.
REJECTIONS 3
Claims 1-12, 14--27, 29, 30, and 37--45 are rejected under 35 U.S.C.
§ 101 as directed to non-statutory subject matter.
Claims 1--4, 6-10, 12, 14--19, 22-25, 27, 29, 30, and 37--45 are
rejected under 35 U.S.C. § 103(a) as unpatentable over dePinto et al.
(US 2002/0194112 Al, pub. Dec. 19, 2002) (hereinafter "dePinto),
McCormick (US 2002/0040352 Al, pub. Apr. 4, 2002), and McGuire et al.
(US 4,404,639, iss. Sept. 13, 1983) (hereinafter "McGuire").
3 After the mailing of the Examiner's Answer on July 27, 2016 in this case,
U.S. Application Serial No. 11/979,243 was abandoned on February 1, 2017.
Application Serial No. 11/979,243 was used to provisionally reject claims 1-
12, 14--27, 29, 30, and 37--45 in this appeal on the ground of nonstatutory
double patenting (Final Act. 13-14); its abandonment renders the rejection
moot.
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Application 10/755,569
Claims 5, 11, and 26 are rejected under 35 U.S.C. § 103(a) as
unpatentable over dePinto, McCormick, McGuire, and Miles
(US 2002/0111842 Al, pub. Aug. 15, 2002).
Claims 20 and 21 are rejected under 35 U.S.C. § 103(a) as
unpatentable over dePinto, McCormick, McGuire, and Beaudoin et al.
(US 7,096,193 B 1, iss. Aug. 22, 2006) (hereinafter "Beaudoin").
ANALYSIS
Non-Statutory Subject Matter
Under 35 U.S.C. § 101, an invention is patent-eligible if it claims a
"new and useful process, machine, manufacture, or composition of matter."
35 U.S.C. § 101. The Supreme Court, however, has long interpreted§ 101
to include an implicit exception: "[l]aws of nature, natural phenomena, and
abstract ideas" are not patentable. See, e.g., Alice Corp. Pty. Ltd. v. CLS
Bankint'l, 134 S. Ct. 2347, 2354 (2014).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66 (2012), "for distinguishing patents that claim
laws of nature, natural phenomena, and abstract ideas from those that claim
patent-eligible applications of those concepts." Alice Corp., 134 S. Ct.
at 2355. The first step in that analysis is to "determine whether the claims at
issue are directed to one of those patent-ineligible concepts." Id. If the
claims are not directed to a patent-ineligible concept, e.g., an abstract idea,
the inquiry ends. Otherwise, the inquiry proceeds to the second step where
the elements of the claims are considered "individually and 'as an ordered
combination'" to determine whether there are additional elements that
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"'transform the nature of the claim' into a patent-eligible application." Id.
(quoting Mayo, 566 U.S. at 79, 78).
The Court acknowledged in Mayo that "all inventions at some level
embody, use, reflect, rest upon, or apply laws of nature, natural phenomena,
or abstract ideas." Mayo, 566 U.S. at 71. Therefore, the Federal Circuit has
instructed that claims are to be considered in their entirety to determine
"'whether their character as a whole is directed to excluded subject matter."'
McRO, Inc. v. Bandai Namco Games Am., Inc., 837 F.3d 1299, 1312
(Fed. Cir. 2016) (quoting Internet Patents Corp. v. Active Network, Inc.,
790 F.3d 1343, 1346 (Fed. Cir. 2015)).
Here, in rejecting the pending claims under 35 U.S.C. § 101, the
Examiner determined that the claims are directed to "managing service
requests," i.e., to a fundamental economic practice, and, therefore, to an
abstract idea; and that the claims "do not include additional elements that are
sufficient to amount to significantly more than the judicial exception
because there are no meaningful limitations that transform the exception into
a patent eligible application" (Final Act. 3).
Appellant argues that the Examiner erred in rejecting the claims under
§ 101 because the claims do not seek to preempt the use of service request
management in all fields such that allowing the claims to issue would
effectively grant a monopoly over managing service requests (Br. 6-9).
That argument is not persuasive at least because preemption is not the sole
test for patent-eligibility.
There is no dispute that the Supreme Court has described "the concern
that drives [the exclusion of abstract ideas from patent eligible subject
matter] as one of pre-emption." Alice Corp., 134 S. Ct. at 2354. But
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characterizing preemption 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 Corp., 134 S. Ct. at 2354). Although "preemption may
signal patent ineligible subject matter, the absence of complete preemption
does not demonstrate patent eligibility." Id. See also OIP Technologies,
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.").
Appellant further argues that the pending claims, like the claims at
issue in Diamond v. Diehr, 450 U.S. 175 (1981), "improve an existing
technological process by providing a solution the industry had not
previously been able to obtain" (Br. 9-10). That argument is likewise
unpersuasive.
Appellant asserts that organizations with disparate geographic
locations previously were unable to obtain IT support services without either
using an expensive and inflexible national vendor (e.g., IBM, EDS, CSC,
etc.) or researching, contacting, evaluating, negotiating with, and
maintaining separate relationships with disparately located IT support
vendors (id. at 10). And Appellant ostensibly maintains that the claimed
invention provides a solution in the form of the third party system for
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managing service requests, i.e., facilitating a relationship between a
customer and one or more vendors (id. at 7).
Yet, we are not persuaded that "researching, contacting, evaluating,
negotiating with, and maintaining separate relationships with disparately-
located IT support vendors" is a technological process. Indeed, as the
Examiner observes, these activities "could be performed by humans
speaking to one another or through other non-technological means such as
pen and paper" (Ans. 4). We also are not persuaded that providing a third
party system to manage service requests, i.e., to facilitate the establishment
of customer/vendor relationships, is a technical solution, as opposed to a
commercial solution.
Rather than being akin to the claims in Diehr, which was directed to a
specific industrial process, i.e., "a physical and chemical process for
molding precision synthetic rubber products," Diehr, 450 U.S. at 184, the
claims here merely recite a computer-implemented method for managing
service requests, i.e., facilitating relationships between a customer and one
or more vendors, which, as the Examiner observes (Ans. 4), is an abstract
idea. Cf buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1353-54 (Fed. Cir.
2014) (holding that creating and managing a contractual relationship
between two entities is a fundamental economic practice, i.e., an abstract
idea). The only portion of the pending claims that can reasonably be
considered "technological" is the claimed "processing unit." And it is clear
from the Specification that this processing unit is no more than a generic
computer component (see Spec. 6 ("Although not required, the system and
method will be described in the general context of computer executable
instructions being executed by one or more processing devices such as a
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personal computer, mainframe computer, personal-digital assistant ('PDA'),
cellular telephone, or the like.")), which is not enough for patent-eligibility.
See Alice Corp., 134 S. Ct. at 2358 ("[I]f a patent's recitation of a computer
amounts to a mere instruction to 'implemen[t]' an abstract idea 'on ... a
computer,' that addition cannot impart patent eligibility.") (internal citations
omitted).
We also are not persuaded of Examiner error to the extent that
Appellant argues that the claims are patent-eligible because the claims are
allegedly non-obvious over the cited prior art (Br. 10). A finding of novelty
or non-obviousness does not automatically lead to the conclusion that the
claimed subject matter is patent-eligible. Although the second step in the
Mayo/Alice framework is termed a search for an "inventive concept," the
analysis is not an evaluation of novelty or non-obviousness, but rather, a
search for "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 Corp., 134 S. Ct. at 2355.
"Groundbreaking, innovative, or even brilliant discovery does not by itself
satisfy the§ 101 inquiry." Ass 'nfor Molecular Pathology v. Myriad
Genetics, Inc., 569 U.S. 576, 591 (2013). A novel and non-obvious claim
directed to a purely abstract idea is, nonetheless, patent-ineligible.
See Mayo, 566 U.S. at 90; see also Diehr, 450 U.S. at 188-89 ("The
'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.").
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We are not persuaded, on the present record, that the Examiner erred
in rejecting claims 1-12, 14--27, 29, 30, and 37--45 under 35 U.S.C. § 101.
Therefore, we sustain the Examiner's rejection.
Obviousness
Independent Claims 1, 15, and 30 and Dependent Claims 4, 6-10, 12, 14,
16-19, 22-25, 27, 29, and 37-45
We are persuaded by Appellants' argument that the Examiner erred in
rejecting independent claims 1, 15, and 30 under 35 U.S.C. § 103(a) because
McGuire, on which the Examiner relies, does not disclose or suggest
"providing functionality for the service requestor ... to agree that the work
order prior to the increase in the spend limit is completed for purposes of
accounting, and to issue a further service request for the purpose of having
the service completed in actuality," as recited in independent claim 1, and
similarly recited in independent claims 15 and 30 (Br. 10-11).
The Examiner cites McGuire at column 9, lines 5-14 as disclosing the
argued limitation (Final Act. 5). But we find nothing there that discloses or
suggests a third party computer system providing functionality for a
customer to perform the recited steps, i.e., agree that a work ordered is
completed for accounting purposes prior to an increase in the spend limit,
and issue a further service request for having the service completed in
actuality. Instead, McGuire merely states:
As an option, the dealer can run a subtotal on all parts and labor
to date to verify that the original estimate has not been exceeded.
Both the customer and the dealer may wish to be aware that an
estimate has or may be exceeded so as to avoid conflict with
consumer protection legislation which has been enacted in
several states of the United States.
McGuire, col. 9, 11. 5-14.
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Therefore, we do not sustain the Examiner's rejection of independent
claims 1, 15, and 30 under 35 U.S.C. § 103(a). For the same reasons, we
also do not sustain the rejection of dependent claims 4, 6-10, 12, 14, 16-19,
22-25, 27, 29, and 37--45. Cf In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir.
1992) ("dependent claims are nonobvious if the independent claims from
which they depend are nonobvious").
Dependent Claims 5, 11, 20, 21, and 26
Claims 5, 11, 20, 21, and 26 each depends, directly or indirectly, from
one of claims 1 and 15. The rejections of these dependent claims do not
cure the deficiency in the Examiner's rejection of independent claims 1
and 15. Therefore, we sustain the Examiner's rejections of claims 5, 11, 20,
21, and 26 under 35 U.S.C. § 103(a).
DECISION
The Examiner's rejection of claims 1-12, 14--27, 29, 30, and 37--45
under 35 U.S.C. § 101 is affirmed.
The Examiner's rejections of claims 1-12, 14--27, 29, 30, and 37--45
under 35 U.S.C. § 103(a) are reversed.
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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