Ex Parte Lutnick

Patent Trials and Appeals Board

May 22, 2019

13932827 - (D) (P.T.A.B. May. 22, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/932,827 07/01/2013
63710 7590 05/24/2019
INNOVATION DIVISION
CANTOR FITZGERALD, L.P.
110 EAST 59TH STREET (6TH FLOOR)
NEW YORK, NY 10022
FIRST NAMED INVENTOR
Howard W. Lutnick
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.
07-2120-C4 1811
EXAMINER
ZIMMERMAN, MATTHEW E
ART UNIT PAPER NUMBER
3684
NOTIFICATION DATE DELIVERY MODE
05/24/2019 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):
patentdocketing@cantor.com
lkorovich@cantor.com
phowe@cantor.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HOW ARD W. LUTNICK
Appeal2018-003303
Application 13/932,827
Technology Center 3600
Before ELENI MANTIS MERCADER, NORMAN H. BEAMER,
and ADAM J. PYONIN, Administrative Patent Judges.
MANTIS MERCADER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner's
final rejection of claims 16-29, which constitute all the pending claims in
this application. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 Appellant identifies CFPH, LLC as the real party in interest (App. Br. 3).
Appeal2018-003303
Application 13/932,827
THE INVENTION
Appellant's claimed invention is directed to processing of "an
indication of an order [ that includes] an order for products and/ or services
from multiple merchants" that is "divided into sub-indications" that each
"indicate a portion of the order [] for a particular merchant" (Spec. ,r 87).
Independent claim 16 reproduced below, is representative of the
subject matter on appeal:
16. A method comprising:
populating, by a computing device, a database with
merchant information for a set of restaurants, in which the
merchant information includes address information, contact
information, menu information, and hours of operation;
determine, by the computing device based on the
merchant information, a plurality of different restaurants from
the set of restaurants that are in a geographical area associated
with a user;
presenting, by the computing device to the user, a user
interface through which a plurality of restaurant items that are
offered for sale by the plurality of different restaurants may be
selected by the user, in which each restaurant item of the
plurality of restaurant items is associated with a respective price
that is the same as a respective walk-in price of the respective
restaurant item at a respective restaurant of the plurality of
restaurants;
receiving, by the computing device from the user through
an electronic communication link, an order that specifies a first
set of restaurant items from a first restaurant of the plurality of
restaurants and a second set of items from a second restaurant
of the plurality of restaurants, and a third set of restaurant items
that is available from both the first restaurant and second
restaurant, in which a total first price of the first sub-part is a
2
Appeal2018-003303
Application 13/932,827
same price as would be paid by walk-in customers of the first
restaurant and total second price of the second sub-part is a
same price as would be paid by walk-in customers of the
second restaurant;
in response to receiving the order, dividing, by the
computing device, the order into subparts, in which a first sub-
part includes the first set of restaurant items and the second sub-
part includes the second set of restaurant items, and in which
the third set is divided between the first sub-part and second
su[b ]-part;
in response to receiving the order, forwarding, by the
computing device through the electronic communication link,
the first sub-part to the first restaurant and the second sub-part
to the second restaurant;
in response to receiving the order, facilitating, by the
computing device, delivery of the order from the first restaurant
and the second restaurant to the user by communicating,
through the electronic communication link, delivery
information to a mobile computing device of a delivery agent;
and
allocating, by the computing device, a first portion of the
total first price to the first restaurant, a second portion of the
total first price to an operator of the computing device, and
allocating a third portion of the total second price to the second
restaurant.
App. Br. 11-12 (Claims Appendix).
REJECTION
The Examiner made the following rejections:
Claims 16-29 stand rejected under 35 U.S.C. § 101 because the
claimed invention is directed to a judicial exception (i.e., a law of nature, a
3
Appeal2018-003303
Application 13/932,827
natural phenomenon, or an abstract idea) without significantly more. Final
Act. 2.
ISSUE
The pivotal issue is whether the Examiner erred in finding that the
claimed invention to be directed to a judicial exception without significantly
more.
ANALYSIS
We adopt the Examiner's findings in the Answer and Final Office
Action and we add the following primarily for emphasis. We note that if
Appellant failed to present arguments on a particular rejection, we decline to
unilaterally review those uncontested aspects of the rejection. See Ex parte
Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential); Hyatt v. Dudas,
551 F.3d 1307, 1313-14 (Fed. Cir. 2008) (theBoardmaytreatarguments
Appellant failed to make for a given ground of rejection as waived).
The Examiner determines claim 16 is patent ineligible under
35 U.S.C. § 101, because the claim "is directed to facilitating creation and
processing of an order split amongst multiple physical retailers, which is
considered to be an abstract idea inasmuch as such activity is considered a
'certain method of organizing human activity,' a 'fundamental economic
practice,' and 'an idea of itself" (Final Act. 5).
The Examiner further finds that "[t]here is nothing in the subject
matter [ of claim 16] that transforms the abstract idea," because "[t ]he
claim's invocation of a 'computing device' as well as 'an electronic
communication link'[] adds no inventive concept" (Final Act. 6; see also
4
Appeal2018-003303
Application 13/932,827
Alice Corp. Pty. Ltd. v. CLS Banklnt'l, 573 U.S. 208,217 (2014)
( describing the two-step framework "for distinguishing patents that claim
laws of nature, natural phenomena, and abstract ideas from those that claim
patent-eligible applications of those concepts")).
After the mailing of the Answer and the filing of the Briefs in this
case, the US PTO published revised guidance on the application of§ 101
(2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50
(Jan. 7, 2019) (hereinafter "Memorandum")). Under the Memorandum, the
Office first looks to whether the claim recites:
( 1) any judicial exceptions, including certain groupings of abstract ideas
(i.e., mathematical concepts, certain methods of organizing human
activity 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)).
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 Memorandum.
5
Appeal2018-003303
Application 13/932,827
We are not persuaded the Examiner's rejection is in error. We adopt
the Examiner's findings and conclusions as our own, and we add the
following primarily for emphasis and clarification with respect to the
Memorandum.
Appellant argues that "the Office Action reduces the claims to a gist
that ignores most of the limitations including significant and meaningful
limitations on which patentability rests" (Reply Br. 6-7) and that
[t]he claims here, as the claims in Enfish [Enfzsh, LLC v.
Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016)] are directed
to an improvement in computerized delivery and referral
systems. By arranging computer components and functionality
in this manner delivery and referral systems operate more
efficiently and quickly.
(Reply Br. 8).
We agree with the Examiner that claim 16 is directed to an abstract
idea, and we find that claim 16 recites methods of organizing human
activity, including both (1) commercial or legal interactions, and (2)
fundamental economic practices. In the claimed method, a "user" places "an
order" via a "user interface" presented by a "computing device," in which
the order specifies items from a "plurality of restaurants." See claim 16.
The computing device then "allocat[ es] ... a first portion of the total first
price to the first restaurant, a second portion of the total first price to an
operator of the computing device, and allocat[ es] a third portion of the total
second price to the second restaurant."
Thus the claim recites the abstract idea of a "commercial or legal
interaction[]." See Memorandum, Section I (Groupings of Abstract Ideas).
Through the claimed computing device, the restaurants are making a sale.
6
Appeal2018-003303
Application 13/932,827
The allocation of funds among the first restaurant, the second restaurant, and
the operator of the computing device is an interaction that forms the basis of
a commercial transaction that legally binds the participants.
Similarly, the claim recites the abstract idea of a "fundamental
economic principle[] or practice[]" (see id.), because the claimed method
represents an intermediary (here, the operator of the computing device)
consolidating disparate orders made by customer into a single order, akin to
the convenience afforded by "one stop shopping."2 Further, the allocation of
funds among the restaurants and the operator of the computing device
mimics the traditional "splitting of the tab" that frequently occurs among
dining patrons.
We are unpersuaded by Appellant's argument that "the claims are
directed to significantly more than an abstract idea" (App. Br. 8) because
like in DDR [H]oldings [DDR Holdings, LLC v. Hotels.com,
L.P., 773 F.3d 1245 (Fed. Cir. 2014)], the claims clearly recite
improvements to technology that are rooted in networking and
computers. Among other things, speed, usability and efficiency
are technological improvements addressed by the claims that
are rooted in computers and networking
(App. Br. 9). Unlike Appellant's claimed method, in DDR Holdings "the
claimed solution is necessarily rooted in computer technology in order to
overcome a problem specifically arising in the realm of computer networks."
DDR Holdings, 773 F.3d at 1257. The Examiner finds, and we agree, that
2 See, for example, "Attention, Retailers! How Convenient Is Your
Convenience Strategy?," MIT Sloan Management Review, April 15, 2000,
available at https://sloanreview.mit.edu/article/attention-retailers-how-
convenient-is-your-convenience-strategy /
7
Appeal2018-003303
Application 13/932,827
Appellant's disclosure "does not describe the invention as solving any stated
problem" (Final Act. 4), and "[u]nlike [DDR Holdings], the applicant has
not put forth any arguments that a problem created by computer networking
exists and is being solved by this invention" (Ans. 6).
Appellant's related argument that
[s]imilar to the claims in Bascom [Bascom Global Internet
Services, Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir.
2016)], the claims here apply ideas related to computerized and
networked delivery and referral services in a more efficient
manner creating an invention that improves their performance
(App. Br. 9) is unpersuasive, as the asserted improvement in the
"computerized networked delivery and referral services" fails to represent a
"technology-based solution" that "improve[ s] the performance of the
computer system itself. Bascom, 827 F.3d at 1351.
Appellant's claimed method resembles "a process that qualifies as an
'abstract idea' for which computers are invoked merely as a tool." Enfzsh,
822 F.3d at 1336. The claimed method does not reconfigure or otherwise
alter computer technology but instead uses the tools of computing to
facilitate the ordering and delivery of a meal.
Appellant points to nothing in the claim or in the disclosure that
indicates (1) a particular computer system architecture or (2) any kind of
technological improvement. The disclosure recites an extensive description
of the "general purpose computers 101 and/ or computing devices" (Spec.
,r 35) to implement the claimed invention, but all described elements are
generic, routine, and conventional. See Spec. ,r,r 35-52 and Fig. 1. We
agree with the Examiner that "[t]he claim's invocation of a 'computing
8
Appeal2018-003303
Application 13/932,827
device' as well as 'an electronic communication link', adds no inventive
concept" (Final Act. 6).
Accordingly, we determine the claims do not integrate the judicial
exception into a practical application. See Memorandum, Section III(A)(2)
(Prong Two: If the Claim Recites a Judicial Exception, Evaluate Whether
the Judicial Exception Is Integrated Into a Practical Application). Nor do we
find the claim includes a specific limitation or a combination of elements
that amounts to significantly more than the judicial exception itself. See
Memorandum, Section III(B) (Step 2B: If the Claim Is Directed to a Judicial
Exception, Evaluate Whether the Claim Provides an Inventive Concept); see
also Aatrix Software, Inc. v. Green Shades Software, Inc., 890 F.3d 1354,
1359 (Fed. Cir. 2018) (Moore, J., concurring) ("the 'inventive concept'
cannot be the abstract idea itself'). The claim elements only recite generic
computer components that are well-understood, routine, and conventional.
See Final Act. 12; Spec. ,r,r 35-52 and Fig. 1; Alice, 573 U.S. at 212
("merely requiring generic computer implementation fails to transform [the]
abstract idea into a patent-eligible invention").
Accordingly, we agree with the Examiner that independent claim 16 is
patent in-eligible, as well as independent claims 29 not separately argued,
and all claims dependent therefrom. See App. Br. 6-10.
CONCLUSION
The Examiner did not err in finding the claimed invention to be
directed to a judicial exception without significantly more.
9
Appeal2018-003303
Application 13/932,827
DECISION
The Examiner's decision rejecting claims 16-29 under 35 U.S.C.
§ 101 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). See 37
C.F.R. § 41.50(±).
AFFIRMED
10