Ex Parte Lewis

Patent Trials and Appeals Board

Jul 2, 2019

11868611 - (D) (P.T.A.B. Jul. 2, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
11/868,611 10/08/2007
38077 7590 07/05/2019
PATRICK W. RASCHE
ARMSTRONG TEASDALE LLP
7700 FORSYTH BOULEVARD
SUITE 1800
ST. LOUIS, MO 63105
FIRST NAMED INVENTOR
Curt Lewis
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.
30323-7 1420
EXAMINER
MCATEE,PATRICK
ART UNIT PAPER NUMBER
3689
NOTIFICATION DATE DELIVERY MODE
07/05/2019 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):
uspatents@armstrongteasdale.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CURT LEWIS 1
Appeal2017-007848
Application 11/868,611
Technology Center 3600
Before BARBARA A. BENOIT, KARA L. SZPONDOWSKI, and
MICHAEL M. BARRY, Administrative Patent Judges.
Opinion for the Board filed by Administrative Patent Judge
MICHAEL M. BARRY.
Opinion dissenting-in-part filed by Administrative Patent Judge
BARBARA A. BENOIT.
BARRY, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1, 3-9, 11-15, 17-21, and 27, which constitute all pending claims.2
We have jurisdiction over the pending claims under 35 U.S.C. § 6(b ).
We affirm.
1 "The real party in interest ... is DirectRFP, LLC." App. Br. 1
2 Claims 2, 10, 16, and 22-25 were cancelled prior to this appeal. See Final
Act. 2. Appellant cancelled claim 26 in the Appeal Brief. See p. 2; see also
Ans. 2 (showing the Examiner's acquiescence to cancellation of claim 26).
Appeal2017-007848
Application 11/868,611
Introduction
Appellant's invention relates to requests for proposals (RFPs ), and
"particularly to systems and methods for generating an RFP and responding
to the RFP." Spec. ,i l; see also id. ,i,i 2-4 (providing background on the
RFP process and explaining "attempts have been made to computerize some
aspects of the process of creating and responding to RFPs").
Claim 1 is illustrative, shown here with specific technology-focused
limitations emphasized in bold italics:
1. A method for generating a request for proposal and
responding to the request for proposal, said method
implemented using an RFP server including a processor and
a memory, said method comprising:
receiving, from a first client device associated with a
customer, a first communication related to a request for
proposal including one or more customer selections of a
plurality of questions and templates and a deadline for
response;
generating, via the RFP server, the request for proposal
based on the one or more customer selections;
transmitting, to a supplier, a link to a website to display
to the supplier;
receiving, from a second client device associated with the
supplier, a request to access the website;
generating, by the RFP server, the website for the
request for proposal specific to the supplier;
determining whether the deadline for response has
passed;
transmitting, to the second client device, instructions for
displaying the website on the second client device, if the
deadline for response has not passed;
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receiving, from the second client device associated with
the supplier, a second communication including a response to
the request for proposal;
receiving, from the second client device, a third
communication related to, but separate from, the response to the
request for proposal, and wherein the third communication is a
private message from the supplier to the customer;
linking, via the RFP server, the third communication to
the supplier and the customer;
receiving, from a requesting computer device, a request
to access one or more communications;
determining, by the RFP server, whether the requesting
computer device is associated with at least one of the supplier
and the customer;
denying, the requesting computer device, access to the
third communication upon a determination that the requesting
computer device is not associated with either the supplier or the
customer;
allowing, the requesting computer device, access to the
third communication upon a determination that the requesting
computer device is at least one of the supplier or the customer;
linking, via the RFP server, the third communication to
the response to the request for proposal;
receiving, from the first client device, a request for an
audit trail of the supplier;
generating, by the RFP server, the audit trail, including
the request for proposal, the response to the request for the
proposal, and the third communication; and
transmitting, to the first client device, instructions to
display the audit trail.
App. Br., Claims App'x 1-2.3
3 Claims Appendix citations are to the corrected version filed Jan. 10, 2017.
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Application 11/868,611
Rejections and References
Claims 1, 3-9, 11-21, and 27 stand rejected under 35 U.S.C. § 101 as
directed to a judicial exception (i.e., an abstract idea) without reciting
significantly more. Final Act. 4-18; see also id. at 75-84.
Claims 1, 4, 6-9, 12, 14-15, 18, 20-21 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Spencer (US 6,356,909 Bl; Mar. 12, 2002),
Britton (US 6,405,202 Bl; June 11, 2002), and Al-Abdulqader (US 2007/
0016514 Al; Jan. 18, 2007). Final Act. 19-54.
Claims 3, 5, 11, 13, 17, and 19 stand rejected under§ 103(a) as
unpatentable over Spencer, Britton, Al-Abdulqader, and Miller (US 2005/
0055306 Al; Mar. 10, 2005). Final Act. 56-70.
Claim 27 stands rejected under§ 103(a) as unpatentable over Spencer,
Britton, Al-Abdulqader, and Cullen (US 2003/0200168 Al; Oct. 23, 2003).
Final Act. 71-74.
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellant's
contentions of reversible error. We disagree with Appellant's conclusions.
As consistent with our discussion below, we adopt the Examiner's findings
and reasoning as set forth in the Final Rejection and in the Answer.
a) The§ 1 OJ Rejection
Appellant argues the Examiner errs in the § 101 rejection of all
pending claims based on claim 1. See App. Br. 6-12. Accordingly, for this
rejection, all claims stand or fall with claim 1. 37 C.F.R. § 41.37(c)(l)(iv).
1) Principles of Law
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
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Supreme Court, however, has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: "[l]aws of nature, natural phenomena, and abstract
ideas" are not patentable. E.g., Alice Corp. Pty. Ltd. v. CLS Bank Int 'l, 573
U.S. 208,216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court's two-step framework, described in Mayo
and Alice. Id. at 217-18 ( citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75-77 (2012)). In accordance with that framework,
we first determine what concept the claim is "directed to." See Alice, 573
U.S. at 219 ("On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk."); see also Bilski v. Kappas, 561 U.S. 593, 611 (2010) ("Claims 1 and 4
in petitioners' application explain the basic concept of hedging, or protecting
against risk.").
Concepts determined to be abstract ideas, and, thus, patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219-20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594-95 (1978)); and
mental processes (Gottschalkv. Benson, 409 U.S. 63, 69 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as "molding rubber products" (Diamond v. Diehr, 450 U.S. 175, 191
(1981 )); "tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores" (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267-68 (1853))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that "[a] claim drawn to subject matter otherwise
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statutory does not become nonstatutory simply because it uses a
mathematical formula." Diehr, 450 U.S. at 187; see also id. at 191 ("We
view respondents' claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula."). Having
said that, the Supreme Court also indicated that a claim "seeking patent
protection for that formula in the abstract ... is not accorded the protection
of our patent laws, ... and this principle cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment." Id. ( citing Benson and Flook); see also id. at 187 ("It is now
commonplace that an application of a law of nature or mathematical formula
to a known structure or process may well be deserving of patent
protection.").
If the claim is "directed to" an abstract idea, we tum to the second
step of the Alice and Mayo framework, where "we must examine the
elements of the claim to determine whether it contains an 'inventive
concept' sufficient to 'transform' the claimed abstract idea into a patent-
eligible application." Alice, 573 U.S. at 221 (internal citation omitted). "A
claim that recites an abstract idea must include 'additional features' to
ensure 'that the [claim] is more than a drafting effort designed to
monopolize the [ abstract idea]."' Id. ( alterations in original) ( quoting Mayo,
566 U.S. at 77). "[M]erely requir[ing] generic computer implementation[]
fail[s] to transform that abstract idea into a patent-eligible invention." Id.
The PTO recently published revised guidance on the application of
§ 101. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed.
Reg. 50-57 (Jan. 7, 2019) ("2019 PEG"). Under the 2019 PEG, we first
look to whether the claim recites:
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(1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing
human activities such as a fundamental economic practice, or mental
processes); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a)-(c), (e)-(h)).4
See 2019 PEG at 52, 55-56. Only if a claim (1) recites a judicial exception
and (2) does not integrate that exception into a practical application, does the
office then look to whether the claim:
(3) adds a specific limitation beyond the judicial exception that are not
"well-understood, routine, conventional" in the field (see MPEP
§ 2106.05(d)); or
(4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception.
See 2019 PEG at 56.
2) Analysis
(a) Alice/Mayo Step One, 2019 PEG Step 2A Prong One
Claim 1 recites steps for "[a] method for generating a request for
proposal and responding to the request for proposal." As Appellant states in
the Appeal Brief's Summary of Claimed Subject Matter, and we agree,
"[ c ]laim 1 is directed to a method for generating a request for proposal and
responding to the request for proposal." App. Br. 2; see also Spec. ,-J 1
(stating "the invention relates ... particularly to systems and methods for
generating an RFP and responding to the RFP"). We disagree with
Appellant that the Examiner errs because neither the rejection nor the
Examiner's Answer "clearly identifies an abstract idea that is allegedly
recited by the claims." Reply Br. 2. The Examiner explicitly identifies that
4 All references to the MPEP are to Rev. 08.2017 (Jan. 2018).
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claim 1 "is directed to disseminating an RFP and receiving proposals for the
RFP." Ans. 5. We conclude claim l's limitations for generating a request
for proposal and responding to the request for proposal recite an economic
transaction that takes place among business entities, and therefore claim 1
recites a fundamental economic practice, which is one of certain methods of
organizing human activity, and thus an abstract idea. See MPEP
§ 2106.04(a)(2)(II);5 see also Spec. ,-i,-i 2-4; Ans. 5. 6
We disagree with Appellant that "there is no claim language that
recites or even refers to a specific abstract idea." App. Br. 7 (emphasis
omitted). In addition to the claim preamble's recitation that claim 1 is "[a]
method for generating a request for proposal and responding to the request
for proposal," the body of claim 1 recites "generating ... the request for
proposal" and "receiving ... a response to the request for proposal." Claim
1 recites a method of computerizing or automating a human activity as
Appellant explains in the Specification-the RFP process is generally a
5 "An abstract idea can generally be described at different levels of
abstraction." Apple v. Ameranth Inc., 842 F.3d 1229, 1240 (Fed. Cir. 2016).
At other levels of abstraction, claim 1 also is directed to a "fundamental
economic practice" in that it recites features "relating to the economy and
commerce, such as agreements between people in the form of contracts,
legal obligations, and business relations" (MPEP 2106.04(1 )(2)(I) ( citing In
re Smith, 815 F.3d 816, 818-19 (Fed. Cir. 2016)) and to "an idea 'of itself"
in that it recites features that "can be performed ... by a human using a pen
and paper" (MPEP § 21.6.04(a)(2)(III) (citing and quoting CyberSource, 654
F.3d at 1371-72)). "Adding one abstract idea ... to another abstract idea
... does not render the claim non-abstract." RecogniCorp, LLC v. Nintendo
Co. LTD., 855 F.3d 1322, 1327 (Fed. Cir. 2017); see also FairWarning IP,
LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093-94 (Fed. Cir. 2016) (patent-
ineligible claims were directed to a combination of abstract ideas).
6 Consistent with Appellant's Specification, another way to characterize
claim 1 is that focuses on automating ( or computerizing) a business method
of generating and responding to RFPs.
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manual ( or partially automated) activity in which "a purchaser identifies a
need within an organization and creates a detailed RFP to present to a
potential vendor of a desired product." Spec. ,i 2; see also id. ,i,i 3-4 (stating
that "attempts have been made to computerize some aspects of the process
of creating and responding to RFPs" (i.e., attempts to automate an otherwise
manual (human) activity)).
Claim 1 as shown above in the Introduction highlights technological
limitations in bold italics. The non-highlighted limitations describe (recite)
a certain method of organizing human activity, with functionality that may
be carried out by people using technology no more sophisticated than pen
and paper. The Examiner's § 101 rejection identifies several of those non-
highlighted limitations as reciting data processing-related features of
(a) "using categories to organize, store, and transmit information" and
(b) "comparing new and stored information and using rules to identify
options," which the Examiner determined did not render the claim patent
eligible. Final Act. 7-9 ( quoting id. at 8, 9) ( citing Cyberfone Systems, LLC
v. CNN Interactive Group, Inc., 558 F. App'x 988 (Fed. Cir. 2014);
SmartGene, Inc. v. Advanced Biological Labs., SA, 555 F. App'x 950
(Fed. Cir. 2014)); see also id. at 10 (determining the idea to which claim 1 is
directed "is also similar to the abstract idea identified by the Federal Circuit
in Dealertrack Inc. v. Huber, 674 F.3d 1315 (Fed. Cir. 2012)"). We agree
with the Examiner's explanations for how those data processing-related
limitations are similar to those in claims determined to be ineligible in
Cyberfone, SmartGene, and Dealertrack. See Final Act. 7-1 O; Ans. 3-10.
In other words, in addition to reciting limitations for "generating a request
for proposal and responding to the request for proposal," claim 1 includes
limitations that more specifically recite data processing features that do not
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render non-abstract the recited method of organizing human activity. See
RecogniCorp v. Nintendo, 855 F.3d at 1327 ("Adding one abstract idea ...
to another abstract idea ... does not render the claim non-abstract.").
Thus, under prong one of step 2A the analytical framework of the
2019 PEG, Appellants do not persuade us of Examiner error in the
determination that claim 1 recites an economic transaction that is a
fundamental economic practice, i.e., one of certain methods of organizing
human activity, and thus claim 1 recites an abstract idea.
(b)Alice/Mayo Step One, 2019 PEG Step 2A Prong Two.
Accordingly, pursuant to the 2019 PEG, we consider whether claim 1
integrates the recited judicial exception into a practical application such that
the claim is more precisely directed to a technological implementation or
application of, or improvement to the abstract idea. See 84 Fed. Reg. at 54-
55. We determine that it does not.
Beyond the limitations that recite requirements for "generating a
request for proposal and responding to the request for proposal" and the
subsidiary data processing features 7 as discussed above, claim 1 recites
technological limitations for carrying out the judicial exception using "an
RFP server including a processor and a memory," a "computer device,"
"devices" for first and second clients, and a "website" (along with "a link" to
the website). Those technological limitations are all recited at a high level,
and provide for "computerizing" the implementation of the recited abstract
ideas. For example, the RFP server is simply any computer "including a
processor and a memory," and the claimed functionality of generating a
related website is generic Internet/web technology.
7 See supra note 5.
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Claim 1 does not recite any improvement to the functioning of those
components, alone or in combination, and instead simply uses those
components for their conventional purposes to carry out the recited business
method; therefore, claim 1 does not improve the functioning of a computer
or any other technology or technical field, and neither does it apply the
judicial exception with any particular machine. See MPEP § 2106.0S(a)-(b).
Claim 1 does not effect a particular transformation of the recited articles,
which are used for their ordinary purposes, nor does it add any other
meaningful (technological) limitations beyond "linking the use" of the
method to generically recited technology; thus, the technological limitations
amount to no more than instructions to implement the abstract idea using
general computer-related technology. See MPEP § 2106.0S(c), (e)-(f); see
also id. at (g)-(h) (use of well-known limitations beyond the judicially
excepted matter constitutes "insignificant extra-solution activity" (g) and
claim limitations "merely indicating a field of use or technological
environment in which to apply a judicial exception do not amount to
significantly more" (h)). Thus, at step 2A prong 2 of the 2019 PEG, we
determine claim 1 does not integrate the recited judicial exception into a
practical application and, accordingly, claim 1 is "directed to" its recited
judicial exception of a certain method of organizing human activity. 84 Fed.
Reg. at 53.
Appellant contends "the Examiner fails to provide evidence-let
alone substantial evidence-showing the claims are directed to" abstract
ideas similar to those discussed in Cyberfone, SmartGene, and Dealertrack.
App. Br. 8. This contention is unpersuasive. Whether a claim is directed to
patent-eligible subject matter is an issue of law. SiRF Tech., Inc. v. Int 'l
Trade Comm 'n, 601 F.3d 1319, 1331 (Fed. Cir. 2010). Although evidence
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may be helpful when facts are in dispute, there is no requirement that an
examiner provide evidentiary support in before a conclusion can be made
that a claim is directed to an abstract idea. See Mortgage Grader, Inc. v.
First Choice Loan Servs. Inc., 811 F.3d 1314, 1325-26 (Fed. Cir. 2016)
( explaining "it is also possible, as numerous cases have recognized, that a
§ 101 analysis may sometimes be undertaken without resolving fact issues").
Appellant cites Ex parte Poisson, Appeal 2012-011084 (PTAB 2015)
(non-precedential), In re Lee, 277 F.3d 1338 (2002), and Dickinson v. Zurko,
527 U.S. 150 (1999) in support of the proposition "[t]he Office Action must
provide 'substantial evidence' in support of all rejections." App. Br. 6. 8
This is unpersuasive. In Ex parte Poisson, which is not binding precedent,
the Board reversed a§ 101 rejection because there was a complete lack of
support, including in the specification, for the examiner's determination that
the claim at issue was directed to an abstract idea; here, on the other hand,
Appellant's Specification specifically supports the determination that claim
1 is directed to an abstract idea. In re Lee concerned the necessity of fact-
finding for issues under 35 U.S.C. § 103, not§ 101. Dickinson v. Zurko
concerned the Federal Circuit's standard of review for findings of fact made
by the Patent Office, and does not address whether fact-finding is necessary
under 35 U.S.C. § 101. Those three cases do not support the proposition that
the Examiner must always provide evidence for a determination under the
first prong of the Alice/Mayo analysis.
Appellant contends claim 1 is not directed to an abstract idea because
it is "a specific implementation of a solution to a problem in the software
arts." Reply Br. 4 (citing Enfzsh, 822 F.3d 1327 (Fed. Cir. 2016)); see also
8 Appellant does not identify any specific portion of those decisions.
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App. Br. 10. We disagree. The claim at issue in Enfzsh recited specific
means for configuring rows and columns of a database table along with a
means for indexing data in the table. See 822 F.3d at 1336. Thus, the claim
at issue in Enfzsh was directed to a specific improvement of software
technology. The software aspects of claim 1, however, only use general
software technology for its general purposes; any improvement is to the
business method of processing RFPs. In other words, unlike the limitations
of the claim at issue in Enfzsh that improved (were directed to) database
technology, claim 1 merely uses technology in support of the business
method. See also Ans. 18-21.
Appellant also contends claim 1 is similar to the claim at issue in
McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299 (Fed. Cir.
2016). Reply Br. 5; see also App. Br. 11-12.9 Appellant's comparison to
McRO is unpersuasive. The claim at issue in McRO was specifically
directed to solving a technical problem unique to the field of 3D computer
animation. See 837 F.3d at 1307-08, 1314-16. Appellant's claim 1, on the
other hand, is directed to solving a business method problem. See, e.g.,
Spec. ,-i,-i 1-3, 5.
(c)Alice/Mayo Step Two, 2019 PEG Step 2B.
Accordingly, we tum to step two of the Alice/Mayo analysis. In step
two, the Examiner determines claim 1 does not recite significantly more than
the abstract idea(s) to which the claim is directed because "[t]he additional
elements or combination of elements in claim 1 other than the abstract idea
per se ( e.g., an RFP server, a processor, memory, customer and supplier
'computer' devices, linking and displaying websites or other content) are
9 See infra note 10.
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merely generic computer components recited at a high level of generality."
Final Act. 14-18 (quoting id. at 16). "Neither the context in which the
abstract idea is applied nor the technological application of the abstract idea
to a computer system amount to significantly more ... because the
application of the idea to a computer is a conventional use of known
technology for its intended purpose." Id. at 18 ( explaining there is no
"improvement to another technology or technical field, an improvement to
the functioning of the computer itself, or provide meaningful limitations
beyond generally linking an abstract idea to a particular technological
environment (i.e., implement the idea by applying a computer").
Appellant contends "[t]he Examiner provides only a bald allegation
and !!Q findings of fact to substantiate the assertion that the claims 'do not
provide meaningful limitations to transform the abstract idea into a patent
eligible application of the abstract idea." App. Br. 9 ( citing California
Institute of Technology v. Hughes Comm. Inc., No. 2:13-cv-07245 (C.D. Cal.
2014)). This argument is unpersuasive. Reciting use of generic technology
for performing an otherwise abstract idea ( e.g., as here, a business method)
does not constitute an inventive concept. "It has been clear since Alice that a
claimed invention's use of the ineligible concept to which it is directed
cannot supply the inventive concept that renders the invention 'significantly
more' than that ineligible concept." BSG Tech LLC v. Buyseasons, Inc., 899
F.3d 1281, 1290 (Fed. Cir. 2018). We agree with the Examiner that the
Specification establishes claim l's technological limitations are in fact
generic, and that numerous precedential cases confirm it is a well-
understood, routine, and conventional use of such technology to automate a
process that otherwise is directed to an abstract idea. See Spec. ,-J,-J 52-60,
Figs. 1, 2; Final Act. 14-18, 83-84; Ans. 15-16.
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Appellant further contends claim l's similarity to claims at issue in
cases such as DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245
(2014) and BASCOM Global Internet Services, Inc. v. AT&T Mobility LLC,
827 F .3d 1341 (2016) compels a finding that claim 1 is patent eligible at
Alice/Mayo step two. App. Br. 9-12; 10 see also Reply Br. 4. We disagree.
In DDR Holdings, the Federal Circuit evaluated the eligibility of
claims "address[ing] the problem of retaining website visitors that, if
adhering to the routine, conventional functioning of Internet hyperlink
protocol, would be instantly transported away from a host's website after
'clicking' on an advertisement and activating a hyperlink." 773 F.3d at
1257. The Federal Circuit found the claims in DDR Holdings to be patent-
eligible because "the claimed solution is necessarily rooted in computer
technology in order to overcome a problem specifically arising in the realm
of computer networks." Id. Specifically, the Federal Circuit found the
claims addressed the "challenge of retaining control over the attention of the
customer in the context of the Internet." Id. at 1258. Here, by contrast,
Appellant's claim 1 uses generic computer devices and an Internet "web
page" and "link" to automate a business method-claim 1 does not address a
problem specifically arising in the realm of computer networks or in any
other technological area. Appellant's Specification does not support the
view that claim 1 recites claim elements, alone or in combination, that
address a technological problem. See, e.g., Spec. ,-J,-J 52-60, Figs. 1, 2; see
also Ans. 16-18.
10 In arguing Alice/Mayo step two, Appellant also argues similarity to
claims at issue in Enfish and McRO; these cases, however, were resolved at
step one (822 F.3d at 1339; 837 F.3d at 1316) and are discussed supra.
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Claim 1 is also unlike the claims at issue in BASCOM, which was
directed to the abstract idea of filtering content on the Internet. 82 7 F. 3 d at
1348. The claims in BASCOM were determined at Alice/Mayo step two to
recite a combination of limitations that "claim[] a technology-based solution
(not an abstract-idea-based solution implemented with generic technical
components in a technical way)." 827 F.3d at 1351. Here, however, claim 1
is precisely what the Federal Circuit determined the claim at issue in
BASCOM was not-claim 1 is an abstract-idea-based solution implemented
with generic technical components. In other words, claim 1 merely uses
well-understood technology for its ordinary purposes-the solution provided
by claim 1 arises from business method limitations for processing RFPs, not
from a combination of technology limitations as in BASCOM.
Thus, Appellant does not persuade us that claim 1 recites more than
the combination of an abstract idea with routine technology components,
which constitutes limiting the use of the abstract idea to a particular
technological environment and "does not transform an otherwise abstract
idea into patent-eligible subject matter." Ultramercial, Inc. v. Hulu, LLC,
772 F.3d 709, 716 (Fed. Cir. 2014). Accordingly, we sustain the§ 101
rejection of all pending claims.
b) The§ 103(a) Rejections
Appellant argues the Examiner errs in finding the combination of
Spencer, Britton, and Al-Abdulqader teach or suggest the limitations of
claims 1, 4, 6-9, 12, 14, 15, 18, 20, and 21 as a group, based on the
limitations recited in independent claims 1, 9, and 15. App. Br. 13-16.
Appellant argues error in the rejection of dependent claims 3, 5, 11, 13, 1 7,
19, and 27 based solely on dependency from the independent claims. App.
16
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Br. 17-18. Appellant also argues error in the rejection of all pending claims
based on secondary considerations of nonobviousness and because the
Examiner exercised impermissible hindsight. App. Br. 18-22. We select
claim 1 as representative of all pending claims for all the § 103 arguments.
37 C.F.R. § 41.37(c)(l)(iv).
1) Issue I-Prima F acie Case
Appellant initially contends "a prima facie case under Section 103 has
not been satisfied" by the Examiner's rejection. App. Br. 13; see also Reply
Br. 6. This argument is unpersuasive. As the Federal Circuit has clarified,
"the prima facie case is merely a procedural device that enables
an appropriate shift of the burden of production." Hyatt v.
Dudas, 492 F.3d 1365, 1369 (Fed. Cir. 2007) (citing In re
Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992)[)]. See also In
re Piasecki, 745 F.2d 1468, 1472 (Fed. Cir. 1984). The Patent
and Trademark Office ("PTO") satisfies its initial burden of
production by "adequately explain[ing] the shortcomings it
perceives so that the applicant is properly notified and able to
respond." Hyatt, 492 F.3d at 1370. In other words, the PTO
carries its procedural burden of establishing a prima facie case
when its rejection satisfies 35 U.S.C. § 132, in "notify[ing] the
applicant ... [by] stating the reasons for [its] rejection, or
objection or requirement, together with such information and
references as may be useful in judging of the propriety of
continuing the prosecution of [the] application." 35 U.S.C.
§ 132. That section "is violated when a rejection is so
uninformative that it prevents the applicant from recognizing
and seeking to counter the grounds for rejection." Chester v.
Miller, 906 F.2d 1574, 1578 (Fed. Cir. 1990).
In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011).
Here, the Examiner's findings easily suffice to establish a prima facie
case of obviousness. The Examiner maps specifically identified disclosures
from the cited references to each limitation recited in claim 1 and articulates
rationales, supported by citations to the references, for why an ordinarily
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skilled artisan would have been motivated to combine the references as
proposed. See Final Act. 19-35. Accordingly, the Examiner's rejection is
not "so uninformative that it prevents the applicant from recognizing and
seeking to counter the grounds for rejection." In re Jung, 637 F.3d at 1362.
2) Issue 2-Combined Teachings of Spencer, Britton, and Al-Abdulqader
Appellant contends the cited references, alone or in combination, fail
to teach or suggest the following three combination of limitations:
linking a third communication to the response to the request for
proposal, receiving, from a first client device, a request for an
audit trail of the supplier, generating the audit trail, including
the request for proposal, the response to the request for the
proposal, and the third communication, and transmitting, to the
first client device, instructions to display the audit trail;
receiving a second communication that is a response to a
request for proposal and a third communication that is a private
message, linking the second communication and the third
communication to the request for proposal; and
linking a third communication to the response to the request for
proposal, receiving a request to access the third communication,
determining whether the requesting computer device is
associated with either the supplier or the customer, denying
access if the requesting computer is not associated with either
the supplier or the customer, and allowing access if the
requesting computer is associated with either the supplier or the
customer.
See App. Br. 13-15.
These general arguments are unpersuasive because, with the exception
of the "private message" limitation discussed below, Appellant does not
explain how or why the Examiner's relevant findings and reasoning are
erroneous. See 37 C.F.R. § 41.37(c)(l)(iv) (explaining "[t]he arguments
shall explain why the examiner erred" and "[a] statement which merely
points out what a claim recites will not be considered an argument").
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Appellant specifically contends the Examiner errs because "[ n ]ow here
does Spencer describe or suggest private messages that are linked to the
RFP ," and "[ n Jowhere does Britton describe or suggest security for
messages, just for an [Object Oriented Database]." App. Br. 14; see also
Reply Br. 6 ( contending "none of the references provide for private
messages"). This argument is unpersuasive of error in the Examiner's
determination that the combined teachings of Spencer and Britton render
obvious a "third communication [that] is a private message from the supplier
to the customer," as recited in claim 1. Final Act. 25, 27-30.
Spencer discloses a web-based system for managing RFPs and
responses that provides "a secure environment accessible by selected users."
See, e.g., Spencer Title, 3:8-12 (quoting id. at 3:12); see also Ans. 29 (citing
Spencer 8: 12-19; 11 :21-26; Final Act. 27-28). Spencer specifically
discloses sending messages specific to individual RFP respondents, which
can include password information for accessing an RFP and plainly are
intended to be private messages. See, e.g., Spencer claim 7. In view of
these disclosures, an ordinarily skilled artisan would have understood
Spencer to teach private messages that are linked to an RFP.
The Examiner also finds, and Appellant does not dispute, Spencer's
web-based RFP system, in which "vendors (i.e., suppliers) may ask question
of the RFP creators (i.e., purchasers) using a bulletin board accessible on the
web, allowing vendors to ask questions and receive responses from the RFP
creators" teaches, in the vernacular of claim 1, a "third communication" that
is "a message from the supplier to the customer." Final Act. 25 ( citing
Spencer 17:64-18:5); see also id. at 27 (finding Spencer does not
specifically disclose the message from the supplier to the customer is a
"private message").
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The Examiner then finds Britton discloses restricting information
access to only those parties having appropriate permission, and that the
combined disclosures of Spencer and Britton teach or suggest the limitation
that "the third communication is a private message from the supplier to the
customer," as recited. Id. at 30-31 ( citing Britton 1 :29-39, 1 :55-60, 2:56-
64, 3:5-10, 3:56-60, 7:56-66, 8:19-64, Fig. 8); see also Ans. 30-31. In
other words, the Examiner determines it would have been obvious to an
ordinarily skilled artisan to implement the system of Spencer using the
object oriented techniques of Britton, which would have included using
Britton' s access control techniques with the messages of Spencer. See Final
Act. 30-31; Ans. 30-31.
Appellant contends that because "Britton only describes access
control for an object oriented database, not for any messaging system," the
Examiner's determination is an exercise of impermissible hindsight. App.
Br. 21; see also Reply Br. 6-7. We disagree. Each reference cited by the
Examiner must be read, not in isolation, but for what it fairly teaches in
combination with the prior art as a whole. See In re Merck & Co., Inc., 800
F.2d 1091, 1097 (Fed. Cir. 1986). "The test for obviousness is not whether
the features of a secondary reference may be bodily incorporated into the
structure of the primary reference." In re Keller, 642 F.2d 413, 425 (CCPA
1981 ). Moreover, "[a] reference must be considered for everything it
teaches by way of technology and is not limited to the particular invention it
is describing and attempting to protect." EWP Corp. v. Reliance Universal
Inc., 755 F.2d 898, 907 (Fed. Cir. 1985) (emphasis omitted). The relevant
inquiry is whether the claimed subject matter would have been obvious to
those of ordinary skill in the art in light of the combined teachings of those
references. In re Keller, 642 F.2d at 425.
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We agree with the Examiner that it would have been obvious to make
Spencer's RFP-related communications between suppliers and customers
"private messages." Further, Appellant has not asserted that the proposed
modification of Spencer would have been beyond the capabilities of a person
of ordinary skill in the art. Absent such an assertion, we "take account of the
inferences and creative steps that a person of ordinary skill in the art would
employ," and find the ordinarily skilled artisan would have overcome any
such difficulties. KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,418 (2007);
see also id. at 421 ("A person of ordinary skill is also a person of ordinary
creativity, not an automaton.").
We agree with the Examiner that ordinarily skilled artisans would
have understood the benefits and advantages of Britton's access control
disclosure, which teaches controlling access to information, including at the
level of individual stored objects ( e.g., a message). See Final Act. 31; see
also, e.g., Britton 2:54-67. We agree with the Examiner that such artisans
would have recognized benefits and advantages, such as security and
flexible access control, that "would be realized in the combination of
Spencer in view of Britton because an RFP management system could
foreseeably be used by a large number of customers, each of whom would
likely be dealing with at least two suppliers (to justify the need for an RFP)."
Final Act. 31. Accordingly, Appellant does not persuade us the Examiner
engaged in impermissible hindsight in combining the teachings of Spencer
and Britton.
3) Issue 2-Declaration of Edward Kluchnik
In support of the nonobviousness argument, Appellant submits a
declaration under 37 C.F.R. § 1.132, in which a representative from a large
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corporate customer (Avery Dennison Corp.) testifies to the benefits of "the
secure communication channel" that is in a commercial implementation of
Appellant's invention. App. Br., Evid. App'x 1-2. Appellant contends "that
the correlation between the claimed limitations and the commercial success
render the invention nonobvious." App. Br. 20; see also Reply Br. 7.
Secondary evidence in support of a nonobviousness argument, such as
a declaration, must be considered. In re Beattie, 974 F.2d 1309, 1313 (Fed.
Cir. 1992); Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966) (noting
that commercial success is one of the secondary considerations that may
indicate nonobviousness). Here, however, the declaration does not outweigh
the obviousness determination, including especially as it relates to claim l's
"private message" limitation for the "third communication." Specifically, as
discussed above, ( 1) Spencer teaches using private messages related to RFPs
between a supplier and a customer, (2) Spencer teaches all aspects of the
recited "third communication" except that it does not expressly teach that
messages are "private messages," (3) Britton teaches access control for
making private any object of stored information ( e.g., a message), and ( 4)
ordinarily skilled artisans would have been amply motivated to have
combined the teachings as proposed by the Examiner. In view of the
strength of the obviousness determination, we find the customer declaration
does not suffice to overcome the rejection. See Ans. 36-39; see also In re
Beattie, 974 F.2d at 1313 (finding seven declarations "insufficient to
establish nonobviousness in the face of the very strong prima facie case of
obviousness").
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4) § 103(a) Conclusion
Accordingly, we sustain the§ 103(a) rejection of claims 1, 3-9, 11-
15, 17-21, and 27.
DECISION
For the above reasons, we affirm the Examiner's rejections of claims
1, 3-9, 11-15, 17-21, and 27 under both 35 U.S.C. §§ 101 and 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l.136(a)(l )(iv).
AFFIRMED
23
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CURT LEWIS
Appeal2017-007848
Application 11/868,611
Technology Center 3600
Before BARBARA A. BENOIT, KARA L. SZPONDOWSKI, and
MICHAEL M. BARRY, Administrative Patent Judges.
BENOIT, Administrative Patent Judge, dissenting-in-part.
I agree with, and join, the majority opinion affirming the Examiner's
rejections of the pending claims under 35 U.S.C. § 103. I, however,
respectfully dissent from the majority opinion affirming the Examiner's
rejection of the pending claims under 35 U.S.C. § 101 as being directed to
patent ineligible subject matter. I recognize the majority opinion's
application of the new guidance. See USPTO's 2019 Revised Patent Subject
Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) ("Guidance"). I,
however, disagree with the characterization of the representative claim and,
therefore, disagree with the majority opinion's conclusion regarding subject
matter eligibility.
The majority opinion focuses on claim 1, which recites:
1. A method for generating a request for proposal and
responding to the request for proposal, said method
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Application 11/868,611
implemented using an RFP server including a processor and a
memory, said method comprising:
receiving, from a first client device associated with a
customer, a first communication related to a request for
proposal including one or more customer selections of a
plurality of questions and templates and a deadline for
response;
generating, via the RFP server, the request for proposal
based on the one or more customer selections;
transmitting, to a supplier, a link to a website to display
to the supplier;
receiving, from a second client device associated with the
supplier, a request to access the website;
generating, by the RFP server, the website for the request
for proposal specific to the supplier;
determining whether the deadline for response has
passed;
transmitting, to the second client device, instructions for
displaying the website on the second client device, if the
deadline for response has not passed;
receiving, from the second client device associated with
the supplier, a second communication including a response to
the request for proposal;
receiving, from the second client device, a third
communication related to, but separate from, the response to the
request for proposal, and wherein the third communication is a
private message from the supplier to the customer;
linking, via the RFP server, the third communication to
the supplier and the customer;
receiving, from a requesting computer device, a request
to access one or more communications;
determining, by the RFP server, whether the requesting
computer device is associated with at least one of the supplier
and the customer;
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denying, the requesting computer device, access to the
third communication upon a determination that the requesting
computer device is not associated with either the supplier or the
customer;
allowing, the requesting computer device, access to the
third communication upon a determination that the requesting
computer device is at least one of the supplier or the customer;
linking, via the RFP server, the third communication to
the response to the request for proposal;
receiving, from the first client device, a request for an
audit trail of the supplier;
generating, by the RFP server, the audit trail, including
the request for proposal, the response to the request for the
proposal, and the third communication; and
transmitting, to the first client device, instructions to
display the audit trail.
App. Br., Claims App'x 1-2. 11
Claim 1 describes using "an RFP server" that (i) receives information
from a customer, (ii) generates a request for proposal based on customer
information, (iii) generates a website for the request for the proposal that is
specific to the supplier, (iv) receives the supplier's response to the request
for proposal, (v) receives a private message from the supplier to the
customer, (vi) allows only the customer or the supplier to access the private
message, (vii) generates an audit trail that includes customer's request for
proposal, the supplier's response to the request for proposal, and the private
message, and (viii) transmits the audit trail to the customer.
As such, claim 1 includes limitations for generating a request for
proposal and responding to the request for proposal ( as reflected in the
11 Claims Appendix citations are to the corrected version filed January 10,
2017.
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preamble to claim 1 ), which is a certain method of organizing human
activity as explained by the majority opinion. Accordingly, I agree with the
majority opinion that claim 1 recites an abstract idea of certain methods of
organizing human activity.
My reasoning departs from the majority opinion in that I would
determine that the recited abstract idea is integrated into a practical
application that imposes a meaningful limit on the abstract idea. Claim 1
recites "generating, by the RFP server, the website for the request for
proposal specific to the supplier" and limitations related to providing the
supplier access to the generated website. For example, claim 1 recites
"transmitting, to a supplier, a link to a website to display to the supplier;
receiving, from a second client device associated with the supplier, a request
to access the website;" "determining whether the deadline for response has
passed;" and "transmitting, to the second client device, instructions for
displaying the website on the second client device, if the deadline for
response has not passed."
Because the claim requires generating and using a website specific to
the supplier to respond to a particular request for proposal, in my view, the
claims are not the mere automation of a manual process using abstract data
processing features. I would conclude that the claim is directed to a
technological improvement. MPEP § 2106.0S(a). In my view, the claimed
generation and use of a website specific to a particular supplier to respond to
a particular request for proposal solves the problem of "semi-computerized
systems" described by the Specification. In particular, the Specification
states:
Some attempts have been made to computerize some aspects
of the process of creating and responding to RFPs. Other
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systems are based on a word processing system. These semi-
computerized systems lack the ease of use for creating and
responding to the RFP. The purchaser and the vendor usually
acquire specialized and complex software to be able to use the
semi-computerized systems.
Spec. ,i 4; see Final Rej. 11.
As such, I would conclude that claim 1 as a whole imposes a
meaningful limit on the abstract idea of generating a request for proposal
and responding to the request for proposal and is more than a drafting effort
designed to monopolize the abstract idea. See Guidance, 84 Fed. Reg. at 54
("A claim that integrates a judicial exception into a practical application of
the exception ... will apply, rely on, or use the judicial exception in a
manner that imposes a meaningful limit on the judicial exception, such that
the claim is more than a drafting effort designed to monopolize the judicial
exception.").
I do not view the generic components of first and second client
devices and an RFP server including a processing and a memory on which
the method is performed as dooming the claim. See Enfzsh, LLC v.
Microsoft Corp., 822 F.3d 1327, 1338 (Fed. Cir. 2016) ("[W]e are not
persuaded that the invention's ability to run on a general-purpose computer
dooms the claims."). Rather, unlike the majority opinion, I view the claim
as reciting a specific technique in a computer-based method to improve
responding to a request for proposal. As such, in my view, the claim here is
similar to those in DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245,
1257 (Fed. Cir. 2014), Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1339
(Fed. Cir. 2016), andMcRO, Inc. v. Bandai Namco Games Am. Inc., 837
F.3d 1299, 1316 (Fed. Cir. 2016) that are directed to a particular solution or
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improvements to technology or computer functionality and are patent
eligible. See also MPEP § 2106.0S(a).
For these reasons, I would conclude that the representative claim
recites eligible subject matter and would reverse the§ 101 rejection of the
claims. See Guidance, 84 Fed. Reg. at 54.
6