Ex Parte Marziali et al

Patent Trial and Appeal Board

Aug 28, 2017

13359214 (P.T.A.B. Aug. 28, 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.
13/359,214 01/26/2012 Andrea Marziali PT1170US00 5411
132326 7590
Thompson Hine LLP
10050 Innovation Drive
Suite 400
Dayton, OH 45342-4934
EXAMINER
VETTER, DANIEL
ART UNIT PAPER NUMBER
3628
NOTIFICATION DATE DELIVERY MODE
08/30/2017 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):
ipdocket @ thompsonhine. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANDREA MARZIALI, MAURIZIO NEGRI, STEVE NO WITZ,
YOHANN PUYHAUBERT, and MARC LAVAL
Appeal 2016-007375
Application 13/359,214
Technology Center 3600
Before ROBERT E. NAPPI, LARRY J. HUME, and
CATHERINE SHIANG, Administrative Patent Judges.
SHIANG, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1—20, which are all the claims pending and rejected in the
application. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
STATEMENT OF THE CASE
Introduction
According to the Specification, the present invention relates to
computer-implemented integrated travel system. See generally Spec. 1.
Appeal 2016-007375
Application 13/359,214
Claim 1 is exemplary:
1. A seamless travel hive system, comprising:
a processor; and
a computer storage medium including a plurality of
instructions that, when executed by said processor, cause said
system to:
store a user’s travel-related information and a unique user
identifier corresponding to each user on a seamless travel hive
repository, wherein said unique user identifier associates a
user’s travel-related system account with said user’s travel-
related information that is stored in said seamless travel hive
repository;
generate experience marks for displaying and sharing
said user's travel-related information;
generate notifications of new travel-related information;
continuously and dynamically integrate said seamless
travel hive repository with at least one consumer travel-related
application to share said new travel-related information;
automatically store said new travel-related information in
said seamless travel hive repository; and
aggregate said user's travel-related information contained
in said experience marks.
References and Rejections
Claims 1—20 are rejected under 35 U.S.C. § 101 because they are
directed to patent-ineligible subject matter.
Claims 1—6, 8—14, and 16—20 are rejected under 35 U.S.C. § 102(b) as
being anticipated by Cunningham (US 2010/0228577 Al; Sept. 9, 2010).
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Claims 7 and 15 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Cunningham and McEvoy (US 2005/0114167 Al;
May 26, 2005).
ANALYSIS
35 U.S.C. §101
We disagree with Appellants’ arguments, and agree with and adopt
the Examiner’s findings and conclusions in (i) the action from which this
appeal is taken and (ii) the Answer to the extent they are consistent with our
analysis below.1
The Examiner rejects the claims under 35 U.S.C. § 101 because they
are directed to patent-ineligible subject matter. See Final Act. 2-4; Ans. 2—
3. In particular, the Examiner finds the claims are directed to the abstract
idea of managing and sharing information. See Ans. 2—3. The Examiner
further finds the claims use generic computer components to perform
generic computer functions. See Final Act. 2-4. The Examiner also finds
the rejected claims are similar to the claims of Content Extraction &
Transmission LLC v. Wells Fargo Bank, Nat’l Ass ’n, 776 F.3d 1343, 1347
(Fed. Cir. 2014) or Cyberfone Systems, LLC v. CNN Interactive Group, Inc.,
558 Fed. App’x 988 (Fed. Cir. 2014) (unpublished), and are materially
different from the claims of DDR Holdings, LLC v. Hotels.com, L.P., 773
F.3d 1245, 1257 (Fed. Cir. 2014). See Ans. 3. Appellants argue the
Examiner erred. See App. Br. 5—11; Reply Br. 2—5.
Appellants have not persuaded us of error. Section 101 of the Patent
1 To the extent Appellants advance new arguments in the Reply Brief
without showing good cause, Appellants have waived such arguments. See
37 C.F.R. § 41.41(b)(2).
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Act provides “[w]hoever invents or discovers any new and useful process,
machine, manufacture, or composition of matter, or any new and useful
improvement thereof, may obtain a patent therefor, subject to the conditions
and requirements of this title.” 35 U.S.C. § 101. That provision “contains
an important implicit exception: Laws of nature, natural phenomena, and
abstract ideas are not patentable.” Alice Corp. Pty. Ltd. v. CIS Banklnt’l,
134 S. Ct. 2347, 2354 (2014). According to the Supreme Court:
[W]e set forth a framework for distinguishing patents that claim
laws of nature, natural phenomena, and abstract ideas from
those that claim patent-eligible applications of those concepts.
First, we determine whether the claims at issue are directed to
one of those patent-ineligible concepts. ... If so, we then ask,
“[w]hat else is there in the claims before us?” ... To answer
that question, we consider the elements of each claim both
individually and “as an ordered combination” to determine
whether the additional elements “transform the nature of the
claim” into a patent-eligible application. . . . We have
described step two of this analysis as a search for an “inventive
concept”—i.e., an element or combination of elements that is
“sufficient to ensure that the patent in practice amounts to
significantly more than a patent upon the [ineligible concept]
itself.”
Alice Corp., 134 S. Ct. at 2355.
The Federal Circuit has described the Alice step-one inquiry as
looking at the “focus” of the claims, their “character as a whole,” and the
Alice step-two inquiry as looking more precisely at what the claim elements
add—whether they identify an “inventive concept” in the application of the
ineligible matter to which the claim is directed. See Elec. Power Grp., LLC
v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016); Enfish, LLCv.
Microsoft Corp., 822 F.3d 1327, 1335—36 (Fed. Cir. 2016); Internet Patents
Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015).
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Regarding Alice step one, the Federal Circuit has “treated collecting
information, including when limited to particular content (which does not
change its character as information), as within the realm of abstract ideas.”
Elec. Power, 830 F.3d at 1353 (emphasis added); see also Internet Patents,
790 F.3d at 1348-49 (Fed. Cir. 2015); OIP Techs., Inc. v. Amazon.com, Inc.,
788 F.3d 1359, 1363 (Fed. Cir. 2015); Content Extraction & Transmission
LLC v. Wells Fargo Bank, Natl Ass ’n, 776 F.3d 1343, 1347 (Fed. Cir.
2014). “In a similar vein, we have treated analyzing information by steps
people go through in their minds, or by mathematical algorithms, without
more, as essentially mental processes within the abstract-idea category.”
Elec. Power, 830 F.3d at 1354 (emphasis added); see also In re TLI
Commc’ns. LLC Patent Litig., 823 F.3d 607, 613 (Fed. Cir. 2016). “And we
have recognized that merely presenting the results of abstract processes of
collecting and analyzing information, without more (such as identifying a
particular tool for presentation), is abstract as an ancillary part of such
collection and analysis.” Elec. Power, 830 F.3d at 1354 (emphasis added);
see also Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 714—15 (Fed.
Cir. 2014).
The rejected claims “fall into a familiar class of claims ‘directed to’ a
patent-ineligible concept.” Elec. Power, 830 F.3d at 1353. Contrary to
Appellants’ arguments (App. Br. 5—7; Reply Br. 2—3), the claims are similar
to the claims of Electric Power, and are focused on the combination of
abstract-idea processes or functions. See Elec. Power, 830 F.3d at 1354.
For example, claim 1 is directed to collecting information (“store . . .
information and a unique user identifier . . . automatically store . . .
information”), analyzing information (“continuously and dynamically
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Application 13/359,214
integrate ... to share . . . information; and aggregate . . . information”), and
presenting the results of abstract processes of collecting and analyzing
information (“generate experience marks for displaying and sharing . . .
information; generate notifications of. . . information”). Claim 8 is directed
to collecting information (“automatically storing . . . information and a
unique user identifier”), and analyzing information and presenting the results
of abstract processes of collecting and analyzing information (“generating . .
. for displaying and sharing . . . information; generating . . . notifications . . .
continuously and dynamically integrating the seamless travel hive repository
and consumer travel-related applications ... to share . . . information; and
aggregating . . . information”). Dependent claims are directed to similar
functions or processes, and Appellants have not shown such claims are
directed to other non-abstract functions or processes. See claims 2—7
and 9-20.2
Appellants’ assertion that the Examiner is either taking Office Notice
or improperly relying on common knowledge (App. Br. 6) is unpersuasive.
As discussed above, the Examiner has properly looked at the “focus” of the
claims and their “character as a whole.” See Elec. Power, 830 F.3d at 1353;
Enfish, LLC, 822 F.3d at 1335—36; Internet Patents Corp., 790 F.3d at 1346.
In particular and as discussed above, the Examiner finds the claims are direct
to the abstract idea of managing and sharing information. See Ans. 2—3.
The Examiner also finds the rejected claims are similar to the claims of
Content Extraction (collecting (including storing) information and
2 For example, claim 2 further recites analyzing information based on other
information (“wherein said experience marks are proactively generated
based on . . . information . . . .”).
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recognizing or analyzing information) or Cyberfone Systems (analyzing and
collection information—using categories to organize, store and transmit
information), and are materially different from the claims of DDR Holdings.
See Ans. 3. Appellants’ response that “[t]he subject matter to which the
pending claims are directed is not at all similar to the basic concept of data
recognition and storage claimed in Content Extraction or the utilization of
categories claimed in Cyberfone” (Reply Br. 4) lacks adequate analysis and
is unpersuasive.3
Contrary to Appellants’ assertion (Reply Br. 2—3), the rejected claims
are unlike the claims in Enfish. In Enflsh, the court finds:
The . . . patents are directed to an innovative logical model for a
computer database. ... A logical model generally results in the
creation of particular tables of data, but it does not describe how
the bits and bytes of those tables are arranged in physical
memory devices. Contrary to conventional logical models, the
patented logical model includes all data entities in a single
table, with column definitions provided by rows in that same
table. The patents describe this as the “self-referential”
property of the database.
Enfish, 822 F.3d at 1330.
[T]he plain focus of the claims is on an improvement to
computer functionality itself, not on economic or other tasks for
which a computer is used in its ordinary capacity.
[T]he claims ... are directed to a specific improvement to the
way computers operate, embodied in the self-referential table.
Enfish, 822 F.3d at 1336.
The rejected claims are unlike the claims of Enfish because they are
not “an improvement to computer functionality itself.” Enfish, 822 F.3d at
3 We address Appellants’ arguments about DDR Holdings below.
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1336. Instead, they are similar to the claims of Electric Power, because “the
focus of the claims is not on such an improvement in computers as tools, but
on certain independently abstract ideas that use computers as tools.” Elec.
Power, 830 F.3d at 1354.
Regarding Alice step two, contrary to Appellants’ assertion (App.
Br. 7—11; Reply Br. 3—5), Appellants have not shown the claims in this case
require an arguably inventive set of components or methods, or invoke any
assertedly inventive programming. See Elec. Power, 830 F.3d at 1355.
Contrary to Appellants’ arguments (App. Br. 7—11; Reply Br. 3—5),
the claims are similar to the claims of Electric Power, because they do not
require any nonconventional computer, network, or display components, or
even a “non-conventional and non-generic arrangement of known,
conventional pieces,” but merely call for performance of the claimed
information collection, analysis, and presentation functions on generic
computer components and display devices. See Elec. Power, 830 F.3d at
1355; see also claim 1 (reciting “[a] seamless travel hive system,
comprising: a processor; and a computer storage medium including a
plurality of instructions that, when executed by said processor, cause said
system to: store a user’s travel-related information and a unique user
identifier corresponding to each user on a seamless travel hive repository . . .
.”) (emphases added). Claim 8 recites:
automatically storing . . . information and a unique user
identifier ... in a seamless travel hive repository; generating,
by a processor of a seamless travel hive system ... for
displaying and sharing . . . information; generating, by the
processor, notifications . . . continuously and dynamically
integrating the seamless travel hive repository and consumer
travel-related applications with each other to share said new
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travel-related information
(emphases added). The claimed seamless travel hive repository is an
information repository with the label “seamless travel hive,” and Appellants
have not shown such information repository is non-conventional.
Dependent claims call for similar generic components and devices, and
Appellants have not shown such claims require any non-conventional
components or devices. See App. Br. 10; Reply Br. 3—5; claims 1—7 and 9—
20.4
In short, Appellants have not shown the claims, read in light of the
Specification, require anything other than conventional computer, network,
and display technology for collecting, analyzing, and presenting the desired
information. See Elec. Power, 830 F.3d at 1354. Such invocations of
computers and networks that are not even arguably inventive are
“insufficient to pass the test of an inventive concept in the application” of an
abstract idea. See Elec. Power, 830 F.3d at 1355.
Finally, Appellants’ assertion (App. Br. 8—9; Reply Br. 4—5) about
DDR Holdings, 773 F.3d at 1257, is unpersuasive. In DDR Holdings, the
Court found:
the claims at issue here specify how interactions with the
Internet are manipulated to yield a desired result—a result that
overrides the routine and conventional sequence of events
ordinarily triggered by the click of a hyperlink. Instead of the
computer network operating in its normal, expected manner by
sending the website visitor to the third-party website that
appears to be connected with the clicked advertisement, the
4 Appellants’ argument (App. Br. 10) is unpersuasive: the Examiner
confirms he has considered all of the limitations of the claims for the
rejection (Ans. 3), and Appellants have not shown any of the claims include
an inventive concept.
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claimed system generates and directs the visitor to the above-
described hybrid web page that presents product information
from the third-party and visual “look and feel” elements from
the host website. When the limitations of the ‘399 patent’s
asserted claims are taken together as an ordered combination,
the claims recite an invention that is not merely the routine or
conventional use of the Internet.
DDR Holdings, 773 F.3d at 1258-59.
This case is materially different from DDR because as discussed
above, the claims here recite inventions that are merely the routine or
conventional use of the technology—the opposite of what the claims of
DDR represent. See DDR Holdings, 773 F.3d at 1258—59. Further,
Appellants’ arguments (App. Br. 8—9; Reply Br. 5) are not commensurate
with the scope of the claim. For example, Appellants have not shown
claim 1 requires “a seamless travel hive engine that allows for users of
electronic devices, such as mobile or web-based devices, to share
information across multiple applications, social networks, and other types of
applications” (App. Br. 8). Likewise, Appellants have not shown the claim
requires “eliminate[ing] the need for a user to repeatedly enter data . . . from
multiple channels” (App. Br. 9). In any event, Appellants have not shown
such information sharing is not “‘well-understood, routine, conventional
activities]’ previously known to the industry.” OIP Techs., 788 F.3d
at 1363.
Because Appellants have not persuaded us the Examiner erred, we
sustain the Examiner’s rejection of claims 1—20. With respect to dependent
claim 2, Appellants’ assertion with respect to “travel industry systems” is
unpersuasive. See Elec. Power, 830 F.3d at 1354 (“Most obviously, limiting
the claims to the particular technological environment of power-grid
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monitoring is, without more, insufficient to transform them into patent-
eligible applications of the abstract idea at their core.”); see also Alice, 134
S.Ct. at 2358; Bilski v. Kappos, 561 U.S. 593, 610—11 (2010); Diamond v.
Diehr, 450 U.S. 175, 191—92 (1981). Further, Appellants’ assertion that
“[s]uch generation of experience marks based on a user’s social networks
does not set forth or describe an abstract idea. Instead, the generation of
experience marks as recited in claim 2 is necessarily rooted in computer
technology” (App. Br. 10) is unpersuasive, because it lacks the requisite
analysis and supporting evidence.
35U.S.C.§ 102
We have reviewed the Examiner’s rejection in light of Appellants’
contentions and the evidence of record. We concur with Appellants’
contention the Examiner erred in finding the cited portions of Cunningham
discloses “continuously and dynamically integrate said seamless travel hive
repository with at least one consumer travel-related application to share said
new travel-related information,” as recited in independent claim 1. See App.
Br. 11-13; Reply Br. 5-7.
The Examiner maps the claimed “seamless travel hive repository” to
Cunningham’s trip container. See Final Act. 4; Ans. 3^4. The Examiner
cites Cunningham’s paragraphs 55, 62, 95, 106 (Final Act. 4; Ans. 3—4), but
does not adequately explain why the cited Cunningham portions disclose the
disputed limitation. In particular, it is unclear how the Examiner maps the
claimed “at least one consumer travel-related application.” Further, we have
reviewed the cited Cunningham portions, and they do not disclose
“continuously and dynamically integrate said seamless travel hive repository
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with at least one consumer travel-related application to share said new
travel-related information,” under the Examiner’s mapping.5
Because the Examiner fails to provide sufficient evidence or
explanation to support the anticipation rejection, we are constrained by the
record to reverse the Examiner’s rejection of claim 1.
Independent claim 8 recites a claim limitation that is substantively
similar to the disputed limitation of claim 1. See claim 8. Therefore, for
similar reasons, we reverse the Examiner’s rejection of independent claim 8.
We also reverse the Examiner’s rejection of corresponding dependent
claims 2—6, 9—14, and 16—20.
35U.S.C.§ 103
The Examiner cites an additional reference for the obviousness
rejection of claims 7 and 15. The Examiner relies on Cunningham in the
same manner discussed above in the context of claim 1, and does not rely on
the additional reference in any manner that remedies the deficiencies of the
underlying anticipation rejection. See Final Act. 6.
Accordingly, we reverse the Examiner’s obviousness rejection of
claims 7 and 15.
5 In the event of future prosecution, we leave it to the Examiner to determine
whether Cunningham discloses the disputed limitation under an alternative
mapping. We note the issue of obviousness is not before us, and we leave it
to the Examiner to determine whether the disputed limitation is taught by or
obvious in light of Cunningham’s teachings.
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DECISION
Because we affirm at least one ground of rejection with respect to
each claim on appeal, we affirm the Examiner’s decision rejecting claims 1—
20.
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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