Ex Parte Liu et al

Patent Trial and Appeal Board

Nov 6, 2017

13282251 (P.T.A.B. Nov. 6, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O.Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/282,251 10/26/2011 Deborah Yee-Ky Liu P2395.10243US02 6180
132897 7590 11/08/2017
Maschoff Brennan/ PayPal
1389 Center Drive, Ste 300
Park City, UT 84098
EXAMINER
ZARE, SCOTT A
ART UNIT PAPER NUMBER
3687
NOTIFICATION DATE DELIVERY MODE
11/08/2017 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):
docket @ mabr. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DEBORAH YEE-KY LIU and SU-I LU
Appeal 2016-0005861
Application 13/282,2512
Technology Center 3600
Before JOSEPH A. FISCHETTI, NINA L. MEDLOCK, and
MATTHEW S. MEYERS, Administrative Patent Judges.
MEDLOCK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1, 5, 7, 8, 10, 14, 16, 17, 19, and 21—31. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Our decision references Appellants’ Appeal Brief (“App. Br.,” filed
April 29, 2015) and Reply Brief (“Reply Br.,” filed October 12, 2015), and
the Examiner’s Answer (“Ans.,” mailed August 11, 2015) and Final Office
Action (“Final Act.,” mailed December 29, 2014).
2 Appellants identify eBay Inc. as the real party in interest. App. Br. 2.
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CLAIMED INVENTION
Appellants’ claimed invention “relates to a method and system to
process data,” and more particularly, “to the processing of on-line donations
associated with media content” (Spec. 12).
Claims 1,10, and 19 are the independent claims on appeal. Claim 1,
reproduced below with bracketed notations added, is illustrative of the
claimed subject matter:
1. A method comprising:
[(a)] presenting, on a web page of a first user, a first
payment button with an associated item of media content, the
first payment button being associated with a first set of payees,
the first set of payees including the first user and a second set of
payees that excludes the first user, the second set of payees being
associated with a second payment button;
[(b)] receiving a request from a second user to download
a version of the item of media content along with a version of the
first payment button; and
[(c)] responsive to the request, sending the version of the
item of media content along with a third payment button, the
third payment button being configured to provide a portion of a
value donated using the third payment button to a third set of
payees including the second user and the first set of payees.
REJECTIONS
Claims 1, 5, 7, 8, 10, 14, 16, 17, 19, and 21—31 are rejected under
35 U.S.C. § 101 as directed to non-statutory subject matter.
Claims 1, 5, 7, 10, 14, 16, 19, and 21—31 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Caplan et al. (US 2002/0120567 Al, pub.
Aug. 29, 2002) (hereinafter “Caplan”) and Glinberg (US 2008/0021720 Al,
pub. Jan. 24, 2008).
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Claims 8 and 17 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Caplan, Glinberg, and Official Notice.
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
Banklnt’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, 75—77 (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 “‘transform the nature of the claim’ into a patent-eligible
application.” Alice Corp., 134 S. Ct. at 2355 (quoting Mayo, 566 U.S.
at 78-79).
The Court acknowledged in Mayo, that “all inventions at some level
embody, use, reflect, rest upon, or apply laws of nature, natural phenomena,
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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)).
Appellants maintain here that the § 101 rejection cannot be sustained
because the Examiner has failed to provide evidence to support the finding
that the claims are directed to a method of soliciting and processing
donations associated with media content, i.e., to an abstract idea, and has,
thus, failed to establish a prima face case of patent-ineligibility (App.
Br. 13—18). More particularly, Appellants charge that the Examiner is
required under the Administrative Procedure Act to provide substantial
evidence to support a § 101 rejection {id. at 15—16). And Appellants assert
that unless the Examiner provides authoritative documentation, as the
Supreme Court and Federal Circuit did in Alice, Bilski v. Kappos, 561 U.S.
593 (2010), and buySAFE, Inc. v. Google, Inc., 765 F.3d 1350 (Fed. Cir.
2014), the Examiner has not performed a proper analysis under § 101 {id.
at 17-18).
As an initial matter, we find nothing in Alice, Bilski, or buySAFE that
requires the Office to identify specific references or provide “authoritative
documentation” to support a finding that a claim is directed to an abstract
idea. Nor, contrary to Appellants’ suggestion {see id. at 18—19), did this
Board hold, in Ex parte Renald Poisson, Appeal 2012-011084
(PTAB Feb. 27, 2015), that there is any such requirement. Instead, the
Federal Circuit has repeatedly noted that “the prima facie case is merely a
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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)). The court has, thus,
held that the USPTO carries its procedural burden of establishing a prima
facie case when its rejection satisfies the requirements of 35 U.S.C. § 132 by
notifying the applicant of the reasons for rejection, “together with such
information and references as may be useful in judging of the propriety of
continuing the prosecution of [the] application.” See In re Jung, 637 F.3d
1356, 1362 (Fed. Cir. 2011). Thus, all that is required of the Office is that it
set forth the statutory basis of the rejection in a sufficiently articulate and
informative manner as to meet the notice requirement of § 132. Id.', see also
Chester v. Miller, 906 F.2d 1574, 1578 (Fed. Cir. 1990) (Section 132 “is
violated when the rejection is so uninformative that it prevents the applicant
from recognizing and seeking to counter the grounds for rejection.”).
Here, in rejecting the pending claims under § 101, the Examiner
analyzed the claims using the Mayo!Alice two-step framework, consistent
with the guidance set forth in the USPTO’s “2014 Interim Guidance on
Patent Subject Matter Eligibility,” 79 Fed. Reg. 74618 (Dec. 16, 2014), in
effect at the time the Final Office Action was mailed. Specifically, the
Examiner notified Appellants that claims 1, 5, 7, 8, 10, 14, 16, 17, 19, and
21—31 are directed to “soliciting and processing donations associated with
media content”; that this is an abstract idea; and that the claims do not
include limitations that are “significantly more” than the abstract idea itself
(Final Act. 3—4). The Examiner, thus, notified Appellants of the reasons for
the rejection “together with such information and references as may be
useful in judging of the propriety of continuing the prosecution of [the]
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application.” 35 U.S.C. § 132. And we find that, in doing so, the Examiner
set forth a prima facie case of patent-ineligibility such that the burden then
shifted to Appellants to demonstrate that the claims are patent-eligible.
Addressing the first step of the Mayo!Alice analysis, Appellants assert
that determining whether a claim is directed to an abstract idea involves
determining whether the claim is directed to (1) an idea of itself, e.g., an
algorithm or mathematical formula or (2) a fundamental economic practice
(App. Br. 20). Appellants argue that none of the pending claims is directed
to either an idea of itself or a fundamental economic practice and that none
of the claims, therefore, is directed to an abstract idea (App. Br. 21—22).
Appellants note that the Examiner takes the position that the claims
are directed to an abstract idea by virtue of being directed to a method of
organizing human activity (id. at 22 (citing Final Act. 9)). And Appellants
argue that whether a claim is directed to a method of organizing human
activity is not determinative of whether the claim is abstract (id.). Yet
Appellants cannot reasonably deny, nor do they, that the Court, in Alice,
referred to the concept of risk hedging (which the Court, in Bilski, identified
as an abstract idea) as “a method of organizing human activity.” Alice
Corp., 134 S. Ct. at 2356.
We agree with Appellants that the Court did not suggest in Alice that
all methods of organizing human activities are directed to an abstract idea
(App. Br. 22—23). But neither did the Court hold that only claims directed to
an idea of itself or a fundamental economic practice are directed to an
abstract idea. Appellants argue that the pending claims are not directed to an
idea of itself or a fundamental economic practice, but Appellants present no
persuasive argument or technical reasoning to explain why the pending
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claims are not directed to a method of organizing human activity that
qualifies for treatment as an abstract idea.
We also are not persuaded of Examiner error by Appellants’ argument
that the pending claims are patent-eligible because the claims do not preempt
or otherwise tie up a judicial exception such that others cannot practice it (id.
at 23—25; see also id. at 30-31). Although the Supreme Court has described
“the concern that drives this exclusionary principle [i.e., the exclusion of
abstract ideas from patent eligible subject matter] as one of pre-emption,”
see Alice Corp., 134 S. Ct. at 2354, characterizing pre-emption 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 “[f]or 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). Yet although “preemption may signal patent ineligible subject
matter, the absence of complete preemption does not demonstrate patent
eligibility.” Id.
Turning to the second step of the Mayo/Alice framework, Appellants
assert that even if the claims are directed to an abstract idea, the claims are
nonetheless directed to patent-eligible subject matter because the claims
recite a “specially-configured computer” (App. Br. 26). Appellants assert
that the pending claims recite “multiple ‘payment buttons’ configured to
perform various operations”; and that “[t]hese are all user interface elements
designed to allow interaction with a specifically-configured computer (e.g., a
specific machine)” (id. ). Yet there is no indication in the Specification that
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any specialized hardware is involved. To the contrary, the Specification
describes that the claimed processor “may be a personal computer (PC), a
tablet PC, a set-top box (STB), a Personal Digital Assistant (PDA), a cellular
telephone, a web appliance, a network router, switch or bridge, or any
machine capable of executing a set of instructions (sequential or otherwise)
that specify actions to be taken by that machine” (Spec. 1 50).
Appellants further argue that claims are patent-eligible because the
claimed steps are specified at a low level of generality (App. Br. 26—27) and
the functionality recited in the claims is not conventional (id. at 27—28). Yet
an abstract idea can generally be described at different levels of abstraction.
That the claimed steps may be specified at a low level of generality is an
insufficient basis for finding that the claims are not directed to an abstract
idea. See Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240—1241
(Fed. Cir. 2016) (“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.”).
It also is insufficient, without more, that the functionality, i.e., the
particular operations recited in the claims, e.g., “sending ... a third payment
button . . . configured to provide a portion of a value donated using the third
payment button to a third set of payees,” as recited in claim 1, may not be
routine or conventional absent some indication that the claim elements are
implemented using other than generic computer components. “[AJfter Alice,
there can remain no doubt: recitation of generic computer limitations does
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not make an otherwise ineligible claim patent-eligible.” DDR Holdings,
LLCv. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014) (citing Alice
Corp., 134 S. Ct. at 2358)).
We also are not persuaded of Examiner error by Appellants’ argument
that the pending claims, like those in Diehr,3 solve a “technological problem
in conventional industry practice” (App. Br. 27). Appellants assert that the
claims are directed “to the problem in conventional industry practice of
processing on-line donations associated with media content” and to a
solution to this problem that involves “sending a version of the item of
media content along with a third payment button, the third payment button
being configured to provide a portion of a value donated using the third
payment button to a third set of payees including the second user and the
first set of payees” (id.). But “processing on-line donations associated with
media content” and allocating payments or donations for such content
among a set of payees is not a technical problem; it is a business problem.
And sending a version of the item of media content along with a third
payment button configured to provide a portion of a value donated using the
third payment button to particular payees is a commercial solution, not a
technical solution. The only portion of the pending claims that could be
considered “technological” is the generic computer hardware, i.e., the
claimed “processor” used to implement the claimed invention, which is not
enough to confer subject matter eligibility. See Alice Corp., 134 S. Ct.
at 2358 (“[I]f a patent’s recitation of a computer amounts to a mere
3 Diamond v. Diehr, 450 U.S. 175 (1981).
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instruction to ‘implement]’ an abstract idea ‘on ... a computer,’ that
addition cannot impart patent eligibility.”) (internal citations omitted).
Appellants further argue that the claims recite significantly more than
an abstract idea because the claims improve the functioning of the computer
itself (App. Br. 29). But that argument is likewise unpersuasive.
Appellants note that each of independent claims 1,10, and 19 recites,
in part, a “third payment button being configured to provide a portion of a
value donated using the third payment button to a third set of payees
including the second user and the first set of payees,” and argue that “the
particular type of button recited in the claims constitutes an improvement
to the technology for downloading media content offered via the Internet”
and that this feature qualifies as “significantly more” than an abstract idea
because it is an “‘[ijmprovement to another technology or technical field’”
(id.). But, even accepting Appellants’ argument, there is a fundamental
difference between computer functionality improvements, on the one hand,
and uses of existing computers as tools to perform a particular task, on the
other. Indeed, the Federal Circuit applied this distinction in Enfish, LLC v.
Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016) in rejecting a § 101
challenge at the step one stage in the Alice analysis because the claims at
issue focused on a specific type of data structure, i.e., a self-referential table
for a computer database, designed to improve the way a computer carries out
its basic functions of storing and retrieving data, and not on asserted
advances in uses to which existing computer capabilities could be put. Id.
at 1335—36.
We find no parallel here between independent claims 1,10, and 19
and the claims in Enfish nor any comparable aspect in claims 1,10, and 19
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that represents “an improvement to computer functionality.” The alleged
advantages that Appellants tout do not concern an improvement to computer
capabilities but instead relate to an alleged improvement in distributing
media content via the Internet and allocating the payment or donation for the
content among a set of payees — a process in which a computer is used as a
tool in its ordinary capacity.
Appellants further argue that the claims solve a problem rooted in
computer technology, i.e., the technological problem in conventional
industry practice of processing online donations associated with media
content, and that the present case is similar to DDR Holdings (App. Br. 31—
32). But we find no parallel between the present claims and those at issue in
DDR Holdings.
In DDR Holdings, the Federal Circuit determined that, although the
patent claims at issue involved conventional computers and the Internet, the
claims addressed a challenge particular to the Internet, i.e., retaining website
visitors who, if adhering to the routine, conventional functioning of Internet
hyperlink protocol, would be transported instantly away from a host’s
website after “clicking” on an advertisement and activating a hyperlink.
DDR Holdings, 773 F.3d at 1257. The Federal Circuit, thus, held that the
claims were directed to statutory subject matter because they claim a
solution “necessarily rooted in computer technology in order to overcome a
problem specifically arising in the realm of computer networks.” Id.
No such technological advance is evident in the present invention.
Unlike the situation in DDR Holdings, Appellants do not identify any
problem particular to computer networks and/or the Internet that the claims
allegedly overcome. Instead, the claims merely employ generic computer
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components to perform generic computer functions, i.e., receiving and
processing information.
We are not persuaded for the foregoing reasons that the Examiner
erred in rejecting claims 1, 5, 7, 8, 10, 14, 16, 17, 19, and 21—31 under
35 U.S.C. § 101. Therefore, we sustain the Examiner’s rejection.
Obviousness
Independent Claim 1 and Dependent Claims 5, 7, and 21—25
We are persuaded by Appellants’ argument that the Examiner erred in
rejecting independent claim 1 under 35 U.S.C. § 103(a) because Caplan, on
which the Examiner relies, does not disclose or suggest “receiving a request
from a second user to download a version of the item of media content along
with a version of the first payment button,” as recited in claim 1 (App.
Br. 9-10; see also Reply Br. 2—3).
Caplan is directed to a network-payment service that allows users to
define customized “pay pages” for receiving payments from other users
(Caplan, Abstract), and discloses that payees may create pay pages for a
variety of payment scenarios, e.g., general-purpose payments, honor system
payments, charitable donations, and invoice payments {id. 1 59). Caplan
discloses that a “pay box,” i.e., a display graphic, may be incorporated into a
page to provide functionality for viewers of the page to initiate payment to a
recipient {id. 1 62), and that one particular application for the pay box
feature is to provide a mechanism for compensating creators of digital
content {id. 179), i.e., content creators may post their work in a
downloadable form in conjunction with pay boxes for soliciting voluntary
payments {id. 1 80). Caplan further discloses that in one implementation,
pay boxes that point to a particular pay page may be installed within a
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website of the pay page owner and/or within websites of third parties, i.e.,
“associate sites” {id. 1 62). For example, a third party (associate) distributor
of digital content, e.g., music, may display, within its own website, the pay
boxes of artists, authors, or other content creators, together with the
associated content {id. 1 83). When a user clicks on one of the pay boxes
and makes a payment to the content creator, the third party associate may be
given a portion of each payment as compensation for distributing the content
{id.; see also id. 14, 64, 200 (disclosing that a service provider site may
permit website operators to locate content uploaded by pay page owners and
republish the content on their own web pages together with the pay boxes of
the associated pay page owners)).
In rejecting claim 1 under 35 U.S.C. § 103(a), the Examiner takes the
position, as further detailed in the Answer, that (1) the claimed “first
payment button” is the child payment button; (2) the “first user” is the user
who republishes a child version of the content and payment button; (3) the
“second set of payees” is the original content provider that posted the parent
version of the content and payment button; (4) the “second payment button”
is the parent payment button; and (5) the “second user” is a user who
grabbed the child version from the first user and republished a grandchild
version of the content and payment button (Ans. 7, 12; see also Final Act. 5—
6). Appellants argue that if, in accordance with the Examiner’s
interpretation, the child version of the pay box displayed on an associate’s
website, i.e., the child payment button, is the “first payment button,” Caplan
does not teach or suggest “a version of the first payment button,” i.e.,
“receiving a request from a second user to download a version of the item of
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media content along with a version of the first payment button,” as recited in
claim 1 (App. Br. 9-10).
Responding to Appellants’ argument, the Examiner notes, “[a]s
previously stated, the second payment button may be interpreted to be the
parent pay box which is created by the content creator in Caplan, and the
first payment button may be interpreted as a child version of the pay box”
(Ans. 12). The Examiner further notes that the claim “merely requires some
second user to download a version of the item of media content along with a
version of the first payment button” (id.). And the Examiner takes the
position that, under the broadest reasonable interpretation, “receiving a
request from a second user to download a version of the item of media
content along with a version of the first payment button,” is properly
interpreted as requiring “any version of the item content with any version of
the first payment button” (id. at 12—13). The Examiner, thus, reasons that, in
Caplan, “all the associate pay boxes are versions of one another” and that “a
version of the second payment button is also [a] version of the first payment
button” (id. at 13).
We agree with Appellants that claim 1 cannot be reasonably
interpreted, as the Examiner proposes, to allow any payment button to serve
as a version of any other payment button (Reply Br. 2—3). Rather than
disclosing a “version of the first payment button,” as called for in claim 1,
we agree with Appellants that each of the associate pay boxes is a version of
the “second payment button,” i.e., the parent pay box which is created by the
original content provider in Caplan (id.; see also App. Br. 9-10).
In view of the foregoing, we do not sustain the Examiner’s rejection
of claim 1 under 35 U.S.C. § 103(a). For the same reasons, we also do not
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sustain the Examiner’s rejection of dependent claims 5, 7, and 21—25.
Cf. In reFritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) (“dependent claims
are nonobvious if the independent claims from which they depend are
nonob vious”).
Independent Claims 10 and 19 and Dependent Claims 14, 16, and 26—31
Independent claims 10 and 19 include language substantially similar
to the language of claim 1, and stand rejected based on the same rationale
applied with respect to claim 1 (see Final Act. 7). Therefore, we do not
sustain the Examiner’s rejection under 35 U.S.C. § 103(a) of independent
claims 10 and 19, and claims 14, 16, and 26—31, which depend therefrom,
for the same reasons set forth above with respect to claim 1.
Dependent Claims 8 and 17
Claims 8 and 17 depend from independent claims 1 and 10,
respectively. The Examiner’s rejection of claims 8 and 17 does not cure the
deficiency in the Examiner’s rejection of independent claims 1 and 10.
Therefore, we do not sustain the Examiner’s rejection of dependent claims 8
and 17 under 35 U.S.C. § 103(a) for the same reasons set forth above with
respect to the independent claims.
DECISION
The Examiner’s rejection of claims 1, 5, 7, 8, 10, 14, 16, 17, 19, and
21—31 under 35 U.S.C. § 101 is affirmed.
The Examiner’s rejections of claims 1, 5, 7, 8, 10, 14, 16, 17, 19, and
21—31 under 35 U.S.C. § 103(a) are reversed.
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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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