Ex Parte Mitzlaff

Patent Trial and Appeal Board

Mar 27, 2018

12019128 (P.T.A.B. Mar. 27, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/019,128 01124/2008 Joerg Mitzlaff
49845 7590 03/29/2018
SCHWEGMAN LUNDBERG & WOESSNER/EBAY
P.O. BOX 2938
MINNEAPOLIS, MN 55402
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.
2043.504US 1 9439
EXAMINER
ROSEN, NICHOLAS D
ART UNIT PAPER NUMBER
3625
NOTIFICATION DATE DELIVERY MODE
03/29/2018 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 JOERG MITZLAFF
Appeal 2016-003447
Application 12/019, 12 81
Technology Center 3600
Before JEAN R. HOMERE, JASON V. MORGAN, and
ADAM J. PYONIN, Administrative Patent Judges.
MORGAN, Administrative Patent Judge.
DECISION ON APPEAL
Introduction
This is an appeal under 35 U.S.C. § 134(a) from the Examiner's Final
Rejection of claims 1-24. We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
Invention
Appellant discloses "using a conversational agent to collect
information," "communicat[ing] with the user to receive information related
to a marketplace offering," and "list[ing] the marketplace offering at the
1 Appellant identifies eBay Inc. as the real party in interest. Br. 2.
Appeal 2016-00344 7
Application 12/019, 12 8
computer-implemented marketplace based on the information received."
Abstract.
Representative Claim
1. A computer-implemented method, comprising:
establishing a communication session between a user of a computer
implemented marketplace and a computer implemented
conversational agent associated with the marketplace that is designed
to simulate a conversation with the user to gather listing information;
receiving, via the communication session, conversational information
for use in generating a marketplace offering of an item from the user,
the received conversational information including the listing
information gathered by the computer implemented conversational
agent;
parsing, by one or more processors, the conversational information
received by the conversational agent to obtain the listing information;
and
listing, by one or more processors, the marketplace offering on the
marketplace using the listing information parsed from the
conversational information received by the computer implemented
conversational agent.
Rejection
The Examiner rejects claims 1-24 under 35 U.S.C. § 101 as being
directed to non-statutory subject matter. Final Act. 2--4.
ANALYSIS
We agree with and adopt as our own the Examiner's findings of facts
and conclusions as set forth in the Answer and in the Action from which this
appeal was taken. We have considered Appellant's arguments, but do not
find them persuasive of error. We provide the following explanation for
emphasis.
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Application 12/019, 12 8
In rejecting claim 1, the Examiner finds the claimed invention is
"directed to the judicial exception of providing shopping support which is
considered to be an abstract idea." Final Act. 3. The Examiner further finds
"[ t ]he computing device and apparatuses to implement the [claimed] process
are generic computers with functionalities which are well-understood,
routine and conventional activities previously known to the industry." Id.
Therefore, the Examiner concludes claim 1 is directed to non-statutory
subject matter that is unpatentable under 35 U.S.C. § 101.
Appellant contends the Examiner erred by failing to provide
"authoritative documentation that the identified economic component is
fundamental and long prevalent in our system of commerce." Br. 10.
Rather Appellant argues, the Examiner merely makes "a bare assertion that
[the] Examiner-created summarization of the actual claim limitations is
directed to an abstract idea that is a fundamental economic principle and
method of organizing human activity." Id. at 9. Appellant argues that the
Board itself has indicated "a need to rely on actual evidence rather than
conclusory statements when supporting an assertion that something is an
abstract idea." Id. at 10; see also id. at 11 (citing PNC Bank, Nat 'l Ass 'n v.
Secure Axcess, LLC, Case No. CBM 2014-00100, Paper No. 10, Decision to
Institute (PTAB 2014) (non-precedential), final written decision rev' d-in-
part for other reasons in Secure Axcess, LLC v. PNC Bank Nat 'l Ass 'n, 848
F.3d 1370 (Fed. Cir. 2017)). However, Appellant does not identify any
authority that requires the Office to provide "authoritative documentation" to
support a finding that a claim is directed to an abstract idea. Nor does
Appellant identify any authority that requires the Office to compare the
identified "abstract idea to the examples provided in case law." Br. 13.
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Application 12/019, 12 8
Rather, 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. See In re Jung, 637 F.3d 1356, 1362 (Fed.
Cir. 2011); Chester v. Miller, 906 F.2d 1574, 1578 (Fed. Cir. 1990) (noting
that section 132 "is violated when a rejection is so uninformative that it
prevents the applicant from recognizing and seeking to counter the grounds
for rejection").
Here, the Examiner provides adequate, persuasive support. See Final
Act. 3-5. Further, the Examiner provides additional support-i.e., not just
from the claims and the Specification, but also from extrinsic sources
discussing the history of topics such as automated and human-based
customer support-to show that claim 1 is directed to an abstract idea. See,
e.g., Final Act. 3-5; Adv. Act. 2 (citing Admiral Metals, Reflecting on the
History of Customer Service, available at http://www.admiralmetals.
com/admiral-metals/reflecting-history-customer-service/ (Dec. 10, 2014; last
visited Mar. 18, 2018) ); Ans. 6-7 (citing Kenneth Hein, Soliloquy
Datamines Customer Conversations, available at http://www.dmnews.com/
dataanalytics/ so liloquy-datamines-customer-conversations/ article/ 663 79/
(May 18, 2000; last visited Mar. 18, 2018) ).
We agree with the Examiner that claim I-which uses a computer
implemented conversational agent designed to simulate a conversation with
a user to gather listing information to receive conversational information
that is parsed to obtain listing information for listing-is directed to a form
of "shopping support." Final Act. 3. Specifically, claim 1 relates to the
practice of a customer requesting and receiving a list of marketplace
offerings. Appellant contemplated potentially complex embodiments
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directed to computer-implemented methods designed to replace multiple,
inflexible electronic forms that could discourage users from providing
sufficient information to provide electronic marketplace information. See,
e.g., Spec. i-f 2; Br. 22, 26-27. However, the claimed invention is directed so
broadly as to also encompass simulating the simplest of simulated
conversations that use mere keywords at their core. See, e.g., Fig. 4, Spec.
i-f 3 6 ("conversational information 212 may include auditory data 402,
textual data 406, and keywords 404"); see also Spec. i-f 27. Therefore, the
claimed invention encompasses computer-implemented methods as basic as
those that use computer technologies to supplant directories or catalogs,
examples of shopping support that are abstract.
Appellant note that even if claim 1 is directed to an abstract idea, the
elements of the claim may nonetheless contain "an [']inventive concept[']
sufficient to 'transform' the claimed abstract idea into a patent-eligible
application." Br. 19 (citing Alice Corp. Pty. v. CLS Banklnt'l, 134 S. Ct.
2347, 2357 (2014)). Appellant argues that "unlike the claims at issue in
Alice, independent claim 1 does not merely state an abstract idea and add the
words 'apply it."' Br. 20. Rather, Appellant argues, claim 1 recites a
specially configured computer with recitations directed to low-levels of
generality. Id. at 21.
Appellant's arguments are unpersuasive because Appellant does not
identify anything in the claim or in the Specification that would suggest the
computer-related elements of the claimed invention represent anything more
than "routine and conventional" technologies. Ans. 1 7. The most advanced
technologies alluded to in the Specification seem to be embodiments in
which "a program implementing a conversational agent 260 may use other
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Application 12/019, 12 8
principles, including complex trained Artificial Intelligence (AI)
algorithms." Spec. i-f 33. However, the claimed conversational agent is not
limited to those implemented with complex trained artificial intelligence
algorithms. Another conversational agent example (id.) merely describes
natural language communication technologies dating back to at least 1966
(see Joseph Weizenbaum, ELIZA-a computer program for the study of
natural language communication between man and machine, Commc'ns of
the ACM, vol. 9, no. 1, pp. 36-45 (1966)). Moreover, the claimed invention
is directed to merely using the recited computer-related elements to
implement the underlying abstract idea, rather than being limited to any
particular advances in the computer-related elements.
For these reasons, we are unpersuaded that claim 1 contains additional
elements that "'transform the nature of the claim' into a patent-eligible
application." Alice, 134 S. Ct. at 2355 (quoting Mayo Collaborative Servs.
v. Prometheus Labs., Inc., 566 U.S. 66, 78 (2012)). Accordingly, we sustain
the Examiner's 35 U.S.C. § 101 rejection of claim 1, and claims 13 and 24,
which Appellant argues together with claim 1. Br. 19.
Appellant also contends, without providing any specific examples,
that "each dependent claim includes elements relevant to the subject matter
eligibility of these claims." Id. at 13. Appellant argues the Examiner
erroneously "dismissed all of the dependent claims without analysis or
evidence for each of the dependent claims," and thus "failed to establish a
prima facie case that these dependent claims are not eligible for patent
protection under 35 U.S.C. § 101." Id. at 14. However, the Examiner finds,
with examples given, that "the dependent claims recite additional elements
which are not particularly technological" or that merely "recite routine
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Application 12/019, 12 8
technical features which are not technical advances." Ans. 9 (citing claims 7
and 12). Our own review of the dependent claims accords with the
Examiner's unrebutted characterization of these claims as failing to contain
additional elements that would make any of them patent-eligible. Therefore,
we also sustain the Examiner's 35 U.S.C. § 101 rejection of dependent
claims 2-12 and 14--23.
DECISION
We affirm the Examiner's decision rejecting claims 1-24.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 41.50(f).
AFFIRMED
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