Ex Parte Mesaros

Patent Trial and Appeal Board

Dec 29, 2016

13525040 (P.T.A.B. Dec. 29, 2016)

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.
13/525,040 06/15/2012 Gregory J. Mesaros EWIN-013COP 1803
105882 7590 01/03/2017
Lewis Roca Rothgerber LLP - eWinWin Inc.
4300 Bohannon Drive
Suite 230
Menlo Park, CA 94025
EXAMINER
FADOK, MARK A
ART UNIT PAPER NUMBER
3625
NOTIFICATION DATE DELIVERY MODE
01/03/2017 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):
gmesaros@ewinwin.com
ipdockets@lrrlaw.com
pto@lrrc.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GREGORY J. MESAROS
Appeal 2014-008700
Application 13/525,040
Technology Center 3600
Before MURRIEL E. CRAWFORD, HUBERT C. LORIN,
and MATTHEW S. MEYERS, Administrative Patent Judges.
Opinion for the Board filed by Administrative Patent Judge CRAWFORD.
Opinion Concurring filed by Administrative Patent Judge LORIN.
CRAWFORD, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant(s) seek our review under 35 U.S.C. § 134 of the Examiner’
final decision rejecting claims 1—3, 7—9, 12—16, and 31—36. We have
jurisdiction over the appeal under 35 U.S.C. § 6(b).
We REVERSE.
Appeal 2014-008700
Application 13/525,040
Claim 1 is illustrative:
1. A non-transitory computer readable storage medium having
embodied thereon a program, the program being executable by a processor
to perform a method for providing at least one merchant account by way of a
third party website to present an offer for a product or service, the method
comprising:
presenting terms and conditions associated with using a service,
wherein the service allows a merchant to provide offers to prospective buyer
and pay fees to the third party, wherein the fees are at least a fee triggered by
a sale of the product or service;
storing information about the merchant including location, contact
information, past offers, and a payment method associated with the merchant
to pay fees to the third party;
allowing the merchant to create an offer for delivery to potential
buyers, wherein a prospective buyer is able to review;
the offer,
information about the merchant, including a link to review additional
items for sale,
shipping or delivery information for the product or service,
ranking information associated with the merchant based on feedback
shared by past buyer regarding performance of the merchant, and
feedback provided by past buyers concerning the merchant, wherein
the
feedback is presented to members of a user community by a third
party;
allowing the buyer to purchase the offer by way of an online account,
wherein the online account provides access to a stored payment method
associated with the buyer, past purchasing history that includes a category, a
merchant, or a data or purchase, and stored preferences associated with the
buyer;
storing information in the online account, the information maintained
in an non-transitory computer readable storage medium, and
updating the online account with new information wherein the new
information includes an indication of interest associated with the buyer.
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Appeal 2014-008700
Application 13/525,040
Appellant(s) appeal the following rejection(s):
1. Claims 1—3, 7—9, 12—16, and 31—36 under 35 U.S.C. § 103(a) as
anticipated by Ojha (US 6,598,026 Bl, July 22, 2003) and Walker (US
5,794,207, Aug. 11, 1998) in view of Herz (US 5,754,939, May 19,
1998).
ISSUE
Did the Examiner err in rejecting the claims because the prior art does
not disclose nor would it be obvious to store information about a payment
method associated with the merchant to pay fees to the third party?
ANALYSIS
The Appellant argues that neither Ojha nor Walker discloses that
merchants pay fees to the third party or storing information about a merchant
that includes a payment method associated with the merchant to pay fees.
The Examiner relies on column 20, lines 16—30 of Walker for
teaching sellers paying fees to the third party.
We find that column 20, lines 16—30 of Walker discloses that the
system can derive a revenue stream by charging buyers a fee for using the
service. This portion of Walker also discloses that another way the system
can derive a revenue stream is by the sellers receiving only a percentage of
the price of an item.
The Examiner realizes that Walker does not disclose a credit card
stored by the system in the seller’s account to be used to pay fees charged by
the system, but reasons that the Walker system is capable of doing so, and
concludes that it would have been obvious to modify Walker to use the
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Appeal 2014-008700
Application 13/525,040
payment means available and immediately accessible to the system for pay
fees charged to sellers. The Examiner reasons that one of ordinary skill in
the art could have pursued the known potential solution with a reasonable
expectation of success and the use of stored credit cards for payment at the
third party system was well known (Ans. 11).
The problem with the Examiner’s reasoning is that Walker does not
disclose sellers or merchants paying fees. Rather, the payment of fees in
Walker is done by the buyer. As such there would be no reason to store
payment information of merchants because merchants do not pay fees.
Even if the receipt of only a percentage of the price of an item is
considered a fee, it would not require storing a merchant payment method as
the reduction in the price by a percentage does not involve the payment of a
fee by the merchant but rather a reduction in the amount paid to the
merchant.
In view of the foregoing, we will not sustain the Examiner’s rejection
of claim 1 and claims 2, 3, 7—9, 12—16, and 31—36 dependent therefrom.
DECISION
The decision of the Examiner is reversed.
REVERSED
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Appeal 2014-008700
Application 13/525,040
LORIN, Administrative Patent Judge, concurring.
I concur with the decision to reverse the Examiner’s decision to reject
claims 1—3, 7—9, 12—16, and 31—36 under § 103 over the cited prior art
combinations. However, I find claims 1—3, 7—9, 12—16, and 31—36 to be
directed to judicially-excepted subject matter and thus unpatentable under
§101.
Alice Corp. Pty. Ltd. v. CLS Bank International, 134 S.Ct. 2347
(2014) identifies a two-step framework for determining whether claimed
subject matter is judicially-excepted from patent eligibility under § 101.
According to Alice step one, “[w]e must first determine whether the
claims at issue are directed to a patent-ineligible concept,” such as an
abstract idea. Alice, 134 S.Ct. at 2355.
Taking claim 1, the sole independent claim, as representative of the
claims on appeal, the claimed subject matter is directed to information
management. Information management is a fundamental building block of
human ingenuity. As such it is an abstract idea.
Step two is “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.’” Id. (alteration in original) {quotingMayo Collaborative
Servs. v. Prometheus Labs., Inc., 132 S.Ct. 1289, 1294 (2012)).
I see nothing in the subject matter claimed that transforms the abstract
idea of information management into an inventive concept.
The “medium” of claim 1 sets out six steps for a method performed by
a processor-executable program embodied thereon. Said steps are:
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Appeal 2014-008700
Application 13/525,040
a) “presenting” information A;
b) “storing information” B;
c) “allowing [a] merchant to create an offer for delivery to potential
buyers, wherein a prospective buyer is able to review” information C;
d) “allowing the buyer to purchase the offer by way of an online account,
wherein the online account provides access to” information D;
e) “storing information in the online account”; and,
f) “updating the online account with” information E; wherein,
• Information A = “terms and conditions associated with using a
service, wherein the service allows a merchant to provide offers to
prospective buyers and pay fees to the third party, wherein the fees
are at least a fee triggered by a sale of the product or service”;
• Information B = “about the merchant including location, contact
information, past offers, and a payment method associated with the
merchant to pay fees to the third party”;
• Information C = “the offer, information about the merchant,
including a link to review additional items for sale, shipping or
delivery information for the product or service, ranking
information associated with the merchant based on feedback
shared by past buyers regarding performance of the merchant, and
feedback provided by past buyers concerning the merchant,
wherein the feedback is presented to members of a user community
by a third party”;
• Information D = “a stored payment method associated with the
buyer, past purchasing history that includes a category, a merchant,
or a date of purchase, and stored preferences associated with the
buyer”; and,
• Information E = “new information, wherein the new information
includes an indication of interest associated with the buyer”.
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Appeal 2014-008700
Application 13/525,040
None of these six individual steps, viewed “both individually and ‘as an
ordered combination,’ ‘transform the nature of the claim’ into patent-
eligible” subject matter. See Alice, 134 S.Ct. at 2355 {quoting Mayo, 132
S.Ct. at 1297, 1298).
Steps b), e), and f) to “storing” and “updating” are arguably
necessarily computer-enabled. But the Specification supports the view that
they can be performed any generic computer system. See Spec., para. 35.
Plus “storing” and “updating” are routine computer functions. The
employment of a generic computer system for its routine storing and
updating functions is insufficient to transform the information processing
abstract idea into an inventive concept. Cf. Alice, 134 S.Ct. at 2358 ( “[T]he
mere recitation of a generic computer cannot transform a patent-ineligible
abstract idea into a patent-eligible invention. Stating an abstract idea ‘while
adding the words ‘apply if is not enough for patent eligibility.”) See also
Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 716 (Fed. Cir. 2014):
Adding routine additional steps such as updating an activity log,
requiring a request from the consumer to view the ad, restrictions on
public access, and use of the Internet does not transform an otherwise
abstract idea into patent-eligible subject matter. Instead, the claimed
sequence of steps comprises only “conventional steps, specified at a
high level of generality,” which is insufficient to supply an “inventive
concept.” Id. at 2357 {quotingMayo, 132 S.Ct. at 1294, 1297, 1300).
Steps a), c), and d) to “presenting” and “allowing,” albeit couched in
“medium” language, reasonably broadly encompass instructing one to
perform them mentally. In that regard, like adding mental steps per se,
adding an instruction to perform mental steps cannot patentably transform an
otherwise abstract idea into an inventive concept. Cf. In re Comiskey, 554
F.3d 967, 979 (Fed. Cir. 2009) (“mental processes—or processes of human
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Appeal 2014-008700
Application 13/525,040
thinking—standing alone are not patentable even if they have practical
application”).
Thus, I construe the six steps as claimed as being an ordered
combination of routine and mental steps instruction. The information
(Information A-E as above) managed by these steps do little to patentably
transform the information management abstract idea. They limit the
information management abstract idea to the e-commerce field. But limiting
said abstract idea to a practical application is not enough to ensure that in
practice the claimed subject matter amounts to significantly more than to be
upon the information management concept itself. Cf. CyberSource Corp. v.
Retail Decisions, Inc., 654 F.3d 1366, 1371 (Fed. Cir. 2011) (“The Court
[Parker v. Flook, 437 U.S. 584 (1978)] rejected the notion that the recitation
of a practical application for the calculation could alone make the invention
patentable.”).
For the foregoing reasons, I find that claim 1 covers subject matter
that is judicially-excepted from patent eligibility under §101. The
dependent claims describe various other types of information which do little
to patentably transform the abstract idea.
For the foregoing reasons, notwithstanding that I CONCUR with the
decision, I find the claims cover judicially-excepted patent-ineligible subject
matter and thus they are rejectable under 35 U.S.C. § 101.
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