Ex Parte Lynch et al

Patent Trial and Appeal Board

Aug 24, 2017

12269784 (P.T.A.B. Aug. 24, 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.
12/269,784 11/12/2008 Liam Sean Lynch 2043.601US1 1957
49845 7590 08/28/2017
SCHWEGMAN LUNDBERG & WOESSNER/EBAY
P.O. BOX 2938
MINNEAPOLIS, MN 55402
EXAMINER
BAHL, SANGEETA
ART UNIT PAPER NUMBER
3629
NOTIFICATION DATE DELIVERY MODE
08/28/2017 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):
USPTO@SLWIP.COM
SLW @blackhillsip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LIAM SEAN LYNCH, FRASER MacCONNELL SMITH,
SANDEEP BHALLA, and DEBORA E. AOKI
Appeal 2016-002985
Application 12/269,784
Technology Center 3600
Before JASON V. MORGAN, NABEEL U. KHAN, and
AARON W. MOORE, Administrative Patent Judges.
MOORE, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2016-002985
Application 12/269,784
STATEMENT OF THE CASE
Appellants1 appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1—12, 14, 15, 17—25, and 27—32, which are all of the pending claims.
We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
THE INVENTION
The application is directed to a “method and a system to register a
user includ[ing] using some user information stored and provided by a third
party system.” (Abstract.) Claim 1, reproduced below, exemplifies the
subject matter on appeal:
1. A system comprising:
at least one processor;
a user service module coupled to the at least one processor
and configured to provide a network-based service, the user
service module comprising:
a user registration module coupled to the at least one
processor and configured to receive an identifier from a user
not registered with the network-based service to perform a
user registration for the network-based service; and
a communication module coupled to the user registration
module and configured to receive user information from a
third party system based on the identifier, to provide the user
an option to modify the user information received from the
third party system, and to receive modification information
from the user based on the option; wherein
the user registration module is configured to:
1 Appellants identify eBay, Inc. as the real party in interest. (App. Br. 2.)
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modify the user information received from the third
party system with the modification information received
from the user, and
at least partially complete the user registration using
the user information received from the third party system
as modified by the modification information received from
the user.
THE REFERENCES
The prior art relied upon by the Examiner in
1 is:
rejecting the claims
Vianello US 2003/0182171 Al Sep. 25, 2003
Barrett et al. US 2007/0277235 Al Nov. 29, 2007
Klug et al. US 7,412,434 B1 Aug. 12, 2008
Gui et al. US 7,676,829 B1
THE REJECTIONS
Mar. 9, 2010
1. Claims 1—12, 14, 15, 17—25, and 27—32 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 natural phenomenon, or an abstract idea)
without significantly more.” (See Final Act. 2—3.)
2. Claims 1, 4—6, 8—12, 17—23, 25, and 27—32 stand rejected under
35 U.S.C. § 103(a) as unpatentable over Klug and Barrett. (See Final Act.
4—17.)
3. Claims 2, 3, 14, 15, and 24 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Klug, Barrett, and Gui. (See Final Act. 17—
19.)
4. Claim 7 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Klug, Barrett, and Vianello. (See Final Act. 19.)
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ANALYSIS
Appellants’ claims are generally directed to a system in which a “user
service module” that is “configured to provide a network-based service” (a)
receives an identifier from a new user to perform a user registration; (b)
receives user information from a third party system based on the identifier;
(c) provides the user an option to modify the received user information; (d)
modifies the user information; and (e) completes the user registration using
modified user information. They stand rejected under Section 101, as
directed to an abstract idea and lacking an inventive concept, and under
Section 103, as obvious of in view of, primarily, Klug and Barrett.
Section 101
The Examiner finds the claims directed to the abstract idea of “user
registration using an identifier to register a user.” (Final Act. 2.) Accepting
that as the abstract idea, we agree with Appellants that the claims, when
considered as an ordered combination, do include an inventive concept
sufficient to render the claims eligible for patenting. In particular, the claims
are directed to a system in which user information to be used in a new
registration is received from a third party system, the user is provided the
option of modifying the received information, and user is registered using
the modified registration. We agree with Appellants that this set of steps
provides an improvement in the functioning of the computer, in that it allows
a user to register for new websites without entering all of their information
each time, but with the option of modifying the information if necessary.
These claims do not recite a routine business practice simply
implemented on a general purpose computer; instead, they concern a
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purportedly new2 system for users to interact with computers. “To be sure,
[Appellants’] claims do not recite an invention as technologically complex
as an improved, particularized method of digital data compression,” but “nor
do they recite a commonplace business method aimed at processing business
information, applying a known business process to the particular
technological environment of the Internet, or creating or altering contractual
relations using generic computer functions and conventional network
operations, such as the claims in Alice, Ultramercial, buySAFE, Accenture,
and BancorpT DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245,
1259 (Fed. Cir. 2014). The instant claims are similar in character to those
approved in Bascom Global Internet Servs., Inc. v. AT&T Mobility LLC, 827
F.3d 1341 (Fed. Cir. 2016), which also used conventional computer
components but were found eligible because they arranged those
components so as to provide specific advantages to users of the system. See
id. at 1352 (describing the eligible claims as directed to “carv[ing] out a
specific location for the filtering system (a remote ISP server) and
requiring] the filtering system to give users the ability to customize filtering
for their individual network accounts”); see also Amdocs, 841 F.3d at 1300—
01 (approving a claim that “requires arguably generic components” but also
“necessarily requires that these generic components operate in an
unconventional manner to achieve an improvement in computer
2 Whether the patent eligible system is also patentable over the prior art is a
different question, see Amdocs (Israel) Ltd. v. Openet Telecom, Inc., 841
F.3d 1288, 1311 (Fed. Cir. 2016) (Reyna, J., dissenting) (“The inventiveness
inquiry of § 101 should . . . not be confused with the separate novelty
inquiry of § 102 or the obviousness inquiry of § 103.”), resolved below.
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functionality”); Trading Techs. Int’l, Inc. v. CQG, Inc., 675 F. App’x 1001,
1005 (Fed. Cir. 2017) (“Abstraction is avoided or overcome when a
proposed new application or computer-implemented function is not simply
the generalized use of a computer as a tool to conduct a known or obvious
process, but instead is an improvement to the capability of the system as a
whole.”).
Because we find Appellants’ claims to include the talismanic
“inventive concept,” we decline to sustain the rejection under Section 101.
Section 103
The obviousness rejections rely primarily on Klug, which describes a
system in which a user may store registration information that then may be
used to register the user at various third party websites. In particular, Klug
describes an embodiment in which the user provides registration information
to a registrar web site and then, when the user wishes to register with a third
party website, the user provides a user ID to the new website, allowing the
new website to obtain the user’s information from the registrar web site for
use in registering the user. (See Klug 2:39-50.) Klug is thus quite similar to
Appellants’ system in that it allows a user to store user information for reuse
in multiple new registrations.
The Examiner finds that Klug teaches all of the limitations of claim 1,
except that “Klug does not specifically teach about modifying] information
from [the] third party with modification information from [the] user.” (Final
Act. 6.) The Examiner further finds, however, that “Barrett teaches about
modifying] the user information on the third party system with the
modification information received from the user” and that it would have
been obvious to introduce that feature into a system like Klug “for the
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motivation of providing a technique to users for managing their
identification information on the internet.” (Id.)
Appellants argue the rejection of claim 1 is flawed “because Klug
teaches that the information is provided to the third party web site from the
registrar and the claim recites that the communications module receives
information from a third party system.” (App. Br. 12.) This is not
persuasive. As described above, Klug teaches that the third party web site
receives the user’s information from the registrar. This is essentially the
same as the claim 1 system, in which a “communication module” of “a user
service module . . . configured to provide a network-based service”
“receive[s] user information from a third party system based on the
identifier.” The claimed “third party system” corresponds to Klug’s
“registrar web site” because they both store the user information that is
provided to a new website with which the user desires to register.
Appellants also argue with respect to claim 1 that “the alleged third
party in Klug for [the “provide the user an option to modify”] element is
different from the alleged third party in the earlier element.” (App. Br. 12.)
We do not agree. In each case the claimed “third party” maps to Klug’s
“registrar web site,” which provides the user information.
With respect to claim 9, Appellants argue that “Barrett, even in
combination with Klug, teaches a registrar website that both verifies and
modifies user information” and, as a consequence, “neither Barrett nor Klug,
alone or in combination, teaches or suggests ‘modifying, at the system
providing the service, the user information received from the third party
system using the modification information received from the user.’” (App.
Br. 13—14.) We are not persuaded of error. In paragraph 23, Barrett
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describes “using [a] stored library of user data to partially complete a user
logon form for [a] resource on behalf of the user.” We do not agree that this
teaching is limited to editing the stored information on the website that
stores it. Instead, we find it to teach that one of skill in the art would have
understood it to be advantageous to provide the stored data for user review
prior to registration. We further agree that, in light of this teaching, it would
have been obvious to one of skill in the art to modify Klug such that the
information provided from the registrar website to the third party website is
presented to the user (including by the third party website) for verification
and, if necessary, editing. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
417 (2007) (“If a technique has been used to improve one device, and a
person of ordinary skill in the art would recognize that it would improve
similar devices in the same way, using the technique is obvious unless its
actual application is beyond his or her skill.”).
As we find Appellants’ arguments insufficient to show error, we
sustain the rejections of claims 1 and 9 under Section 103.
Appellants’ arguments regarding claims 17 and 22 mirror the
arguments for claim 1, and Appellants’ arguments for claim 25 mirror the
arguments for claims 1 and 9. We find them insufficient to show error for
the reasons identified above and, therefore, sustain the Section 103
rejections of claims 17, 22, and 25. For the same reasons, we also sustain
the Section 103 rejections of dependent claims 2—8, 10-12, 14, 15, 18—21,
23, 24, and 27—32, which are not argued separately.
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DECISION
The rejections of claims 1—12, 14, 15, 17—25, and 27—32 under 35
U.S.C. § 101 are reversed. The rejections of claims 1—12, 14, 15, 17—25,
and 27—32 are under 35 U.S.C. § 103 are 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).
AFFIRMED3
3 Because we affirm at least one ground of rejection with respect to each
claim on appeal, the Examiner’s decision rejecting claims 1—12, 14, 15, 17—
25, and 27—32 is affirmed. See 37 C.F.R. § 41.50(a)(1).
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