Ex Parte MULLEN et al

Patent Trials and Appeals Board

Jun 27, 2019

14305870 - (D) (P.T.A.B. Jun. 27, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/305,870 06/16/2014 Siobhan Marie MULLEN
4372 7590 07/01/2019
ARENT FOX LLP
1717 K Street, NW
WASHINGTON, DC 20006-5344
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.
034851.00003 1078
EXAMINER
NGUYEN, THUY-VI THI
ART UNIT PAPER NUMBER
3664
NOTIFICATION DATE DELIVERY MODE
07/01/2019 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):
patentdocket@arentfox.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SIOBHAN MARIE MULLEN and
STEPHEN PATRICK SCULLY1
Appeal2018-001813
Application 14/305,870
Technology Center 3600
Before JENNIFER S. BISK, LARRY J. HUME, and
JULIET MITCHELL DIRBA, Administrative Patent Judges.
HUME, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the
Examiner's Final Rejection of claims 1, 3, 5-15, 18-20, and 23-31, which
are all claims pending in the application. Appellants have canceled claims 2,
4, 16-17, and 21-22. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellants, the real party in interest is SAS GAMES, INC.
Br. 2.
Appeal 2018-001813
Application 14/305,870
STATEMENT OF THE CASE2
The Invention
Appellants' disclosed embodiments and claimed invention relate to
methods and systems for online fundraising. Spec. 53 ("Abstract").
Exemplary Claim
Claim 1, reproduced below, is representative of the subject matter on
appeal ( emphasis added to contested prior-art limitation):
1. A method implemented on a system connected to a
plurality of devices via a network, the method comprising:
receiving a registration by a participant for soliciting
pledges via the network;
receiving a pledge solicited by a participant online, via
one of the plurality of devices connected to the network, the
pledge being received from a contact in an online contact list,
wherein the online contact list is imported into the system or the
pledge request is broadcast via a social media platform, and the
pledge is based on the participant peiforming an online activity
using the one device or another one of the plurality of devices;
calculating, by the system, a number of online activities
required to trigger the pledge and notifying the participant of
the number;
tracking, by the system, a number of online activities
performed by the participant using the one device or another
one of the plurality of devices;
2 Our decision relies upon Appellants' Appeal Brief ("Br.," filed
June 5, 2017); Examiner's Answer ("Ans.," mailed Oct. 6, 2017); Final
Office Action ("Final Act.," mailed Sept. 7, 2016); and the original
Specification ("Spec.," filed June 16, 2014). Appellants did not file a Reply
Brief in response to the factual findings and legal conclusions in the
Examiner's Answer.
2
Appeal 2018-001813
Application 14/305,870
receiving an indication, via the network, that the pledge
has been triggered by the participant when the system
determines the participant has reached the number of required
online activities;
issuing a pledge payment request, via the network, to the
contact in the online contact list after the pledge is triggered by
the participant;
collecting payment of the pledge via the network;
generating a pledge report, wherein the pledge report
tracks a number of pledges made for the participant, an amount
of funds requested for pledges triggered by the participant, an
amount of funds collected, and an amount of funds past due;
and
disbursing the collected payment, via the network, to a
designated account of the participant.
Prior Art
The Examiner relies upon the following prior art as evidence in
rejecting the claims on appeal:
Hoffman et al. ("Hoffman") US 2012/0041767 Al Feb. 16,2012
Cameron et al. ("Cameron") US 2012/0197815 Al Aug. 2, 2012
Nargizian US 2013/0024369 Al Jan.24,2013
Smith et al. ("Smith") US 2013/0080304 Al Mar. 28, 2013
Tetreau US 2013/0196306 Al Aug. 1, 2013
Carvajal US 2015/0262262 Al Sept. 17, 2015
3
Appeal 2018-001813
Application 14/305,870
Rejections on Appeal
RI. Claims 1, 3, 5-15, 18-20, and 23-31 stand rejected under 35
U.S.C. § 101 as being directed to patent-ineligible subject matter. Final
Act. 2.
R2. Claims 1, 3, 5-15, 18-20, and 23-31 stand rejected under 35
U.S.C. § 112(a) as lacking written description support. Final Act. 4.
R3. Claims 1, 3, 5-15, 18-20, and 23-31 stand rejected under 35
U.S.C. § 112(b) as being indefinite. Final Act. 7.
R4. Claims 1, 3, 5-7, 9, 11-15, 18, 20, and 25-31 stand rejected
under 35 U.S.C. § 103(a) as being unpatentable over the combination of
Carvajal, Hoffman, Tetreau, and Smith. Final Act. 9.
R5. Claim 8 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Carvajal, Hoffman, Tetreau, Smith,
and Cameron. Final Act. 22.
R6. Claims 10, 19, 23, and 24 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Carvajal, Hoffman,
Tetreau, Smith, and Nargizian. Final Act. 23.
CLAIM GROUPING
Based on Appellants' arguments (App. Br. 14--18) and our discretion
under 37 C.F.R. § 4I.37(c)(l)(iv), we decide the appeal of patent-ineligible
subjectmatterRejectionRl of claims 1, 3, 5-15, 18-20, and23-31 on the
basis of representative claim 1; we decide the appeal of written description
Rejection R2 of claims 1-3, 5-15, 18-20, and 23-31 on the basis of
representative claim 1; we decide the appeal of indefiniteness Rejection R3
4
Appeal 2018-001813
Application 14/305,870
of claims 1, 3, 5-15, 18-20, and 23-31 on the basis of representative
claim 1; and we decide the appeal of obviousness Rejection R4 of
claims 1, 3, 5-7, 9, 11-15, 18, 20, and 25-31 on the basis of representative
claim 1.
Remaining claims 8, 10, 19, 23, and 24 in Rejections R5 and R6, not
argued separately, stand or fall with the respective independent claim from
which they depend. 3
ISSUES AND ANALYSIS
In reaching this decision, we consider all evidence presented and all
arguments actually made by Appellants. To the extent Appellants have not
advanced separate, substantive arguments for particular claims, or other
issues, such arguments are waived. 37 C.F.R. § 4I.37(c)(l)(iv).
We agree with particular arguments advanced by Appellants with
respect to written description Rejection R2 and indefiniteness Rejection R3
of claims 1, 3, 5-15, 18-20, and 23-31, and we do not sustain these
rejections.
However, we disagree with Appellants' arguments with respect to
Rejections RI and R4 through R6 of claims 1, 3, 5-15, 18-20, and 23-31
and, unless otherwise noted, we incorporate by reference herein and adopt as
3 "Notwithstanding any other provision of this paragraph, the failure of
appellant to separately argue claims which appellant has grouped together
shall constitute a waiver of any argument that the Board must consider the
patentability of any grouped claim separately." 37 C.F.R. § 4I.37(c)(l)(iv).
In addition, when Appellants do not separately argue the patentability of
dependent claims, the claims stand or fall with the claims from which they
depend. In re King, 801 F.2d 1324, 1325 (Fed. Cir. 1986).
5
Appeal 2018-001813
Application 14/305,870
our own: ( 1) the findings and reasons set forth by the Examiner in the action
from which this appeal is taken, and (2) the reasons and rebuttals set forth in
the Examiner's Answer in response to Appellants' arguments. We highlight
and address specific findings and arguments regarding claim 1 for emphasis
as follows.
1. § 101 RejectionRl of Claims 1, 3, 5-15, 18-20, and23-31
Issue 1
Appellants argue (App. Br. 14--18) the Examiner's rejection of
claim 1 under 35 U.S.C. § 101 as being directed to patent-ineligible subject
matter is in error. These contentions present us with the following issue:
Under the USPTO' s Revised Guidance, informed by our governing
case law concerning 35 U.S.C. § 101, is claim 1 patent-ineligible under
§ 101?
Principles of Law
A. 35 U.S.C. § 101
"Whether a claim is drawn to patent-eligible subject matter is an issue
of law that we review de novo." SiRF Tech., Inc. v. Int'! Trade Comm 'n,
601 F.3d 1319, 1331 (Fed. Cir. 2010).
An invention is patent-eligible if it claims a "new and useful process,
machine, manufacture, or composition of matter." 35 U.S.C. § 101.4
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
4 This threshold analysis of whether a claim is directed to one of the four
statutory categories of invention, i.e., a process, machine, manufacture, or
composition of matter, is referred to as "Step l" in the USPTO's patent-
eligibility analysis under § 101. MPEP § 2106.
6
Appeal 2018-001813
Application 14/305,870
implicit exceptions: "[l]aws of nature, natural phenomena, and abstract
ideas" are not patentable. Mayo Collaborative Servs. v. Prometheus Labs.,
Inc., 566 U.S. 66, 70 (2012) (brackets in original) (citing Diamond v. Diehr,
450 U.S. 175, 185 (1981)).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court's two-step framework, described in Mayo
and Alice. Alice Corp. v. CLS Banklnt'l, 573 U.S. 208, 217-18 (2014)
(citing Mayo, 566 U.S. at 75-77). In accordance with that framework, we
first determine what concept the claim is "directed to." See Alice, 573 U.S.
at 219 ("On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk."); see also Bilski v. Kappas, 561 U.S. 593, 611 (2010) ("Claims 1 and 4
in petitioners' application explain the basic concept of hedging, or protecting
against risk .... ").
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219-20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594--95 (1978)); and
mental processes (Gottschalkv. Benson, 409 U.S. 63, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as "molding rubber products" (Diehr, 450 U.S. at 191); "tanning,
dyeing, making water-proof cloth, vulcanizing India rubber, smelting ores"
(id. at 182 n.7 (quoting Corning v. Burden, 56 U.S. (15 How.) 252, 267---68
(1854))); and manufacturing flour (Benson, 409 U.S. at 69 ( citing Cochrane
v. Deener, 94 U.S. 780, 785 (1876))).
7
Appeal 2018-001813
Application 14/305,870
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held "[a] claim drawn to subject matter otherwise statutory
does not become nonstatutory simply because it uses a mathematical
formula." Diehr, 450 U.S. at 187; see also id. at 191 ("We view
respondents' claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula."). Having
said that, the Supreme Court also indicated that a claim "seeking patent
protection for that formula in the abstract ... is not accorded the protection
of our patent laws, and this principle cannot be circumvented by attempting
to limit the use of the formula to a particular technological environment."
Id. ( citation omitted) ( citing Benson and Flook); see, e.g., id. at 187 ("It is
now commonplace that an application of a law of nature or mathematical
formula to a known structure or process may well be deserving of patent
protection.").
Abstract ideas may include, but are not limited to, fundamental
economic practices, methods of organizing human activities, and
mathematical formulas or relationships. Alice, 573 U.S. at 217-21. Under
this guidance, we must therefore ensure at step one that we articulate what
the claims are directed to with enough specificity to ensure the step one
inquiry is meaningful. Id. at 217 ("[W]e tread carefully in construing this
exclusionary principle lest it swallow all of patent law.").
If the claim is "directed to" an abstract idea, we tum to the second
step of the Alice and Mayo framework, where "we must examine the
elements of the claim to determine whether it contains an "'inventive
concept"' sufficient to 'transform' the claimed abstract idea into a patent-
eligible application." Alice, 573 U.S. at 221 ( citation omitted). "A claim
8
Appeal 2018-001813
Application 14/305,870
that recites an abstract idea must include 'additional features' to ensure 'that
the [claim] is more than a drafting effort designed to monopolize the
[abstract idea]."' Id. (alterations in original) (quoting Mayo, 566 U.S. at 77).
"[M]erely requir[ing] generic computer implementation[] fail[ s] to transform
that abstract idea into a patent-eligible invention." Id.
B. USPTO Revised Guidance
The PTO recently published revised guidance in the Federal Register
concerning the application of§ 101. 2019 Revised Patent Subject Matter
Eligibility Guidance, 84 Fed. Reg. 50 (January 7, 2019) (hereinafter
"Revised Guidance") (https://www.govinfo.gov/content/pkg/FR-2019-01-
07/pdf/2018-28282.pdf).
Under the Revised Guidance, we first look 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); 5 and
(2) additional elements that integrate the judicial
exception into a practical application (see Manual for Patent
Examining Procedure ("MPEP") §§ 2106.05(a}-(c), (e}-(h)). 6
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look to
whether the claim:
5 Referred to as "Revised Step 2A, Prong l" in the Revised Guidance
(hereinafter "Step 2A(i)").
6 Referred to as "Revised Step 2A, Prong 2" in the Revised Guidance
(hereinafter "Step 2A(ii)").
9
Appeal 2018-001813
Application 14/305,870
(3) adds a specific limitation beyond the judicial
exception that are not "well-understood, routine, conventional"
in the field (see MPEP § 2106.0S(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. 7
See Revised Guidance.
Step 2A(i) -Abstract Idea
Informed by our judicial precedent, the Revised Guidance extracts and
synthesizes key concepts identified by the courts as abstract ideas to explain
that the abstract idea exception includes the following groupings of subject
matter, when recited as such in a claim limitation:
(a) Mathematical concepts-mathematical relationships,
mathematical formulas or equations, mathematical calculations;
(b) Certain methods of organizing human activity-
fundamental economic principles or practices (including
hedging, insurance, mitigating risk); commercial or legal
interactions (including agreements in the form of contracts;
legal obligations; advertising, marketing or sales activities or
behaviors; business relations); managing personal behavior or
relationships or interactions between people (including social
activities, teaching, and following rules or instructions); and
( c) Mental processes----concepts performed in the human
mind (including an observation, evaluation, judgment, opinion).
Under the Revised Guidance, if the claim does not recite a judicial
exception (a law of nature, natural phenomenon, or subject matter within the
enumerated groupings of abstract ideas above), then the claim is patent-
7 Items (3) and (4) continue to be collectively referred to as "Step 2B" of the
Supreme Court's two-step framework, described in Mayo and Alice.
10
Appeal 2018-001813
Application 14/305,870
eligible at Step 2A(i). This determination concludes the eligibility analysis,
except in situations identified in the Revised Guidance. 8
However, if the claim recites a judicial exception (i.e., an abstract idea
enumerated above, a law of nature, or a natural phenomenon), the claim
requires further analysis for a practical application of the judicial exception
in Step 2A(ii).
Step 2A(ii)-Practical Application
If a claim recites a judicial exception in Step 2A (i), we determine
whether the recited judicial exception is integrated into a practical
application of that exception in Step 2A(ii) by: (a) identifying whether there
are any additional elements recited in the claim beyond the judicial
exception(s ); and (b) evaluating those additional elements individually and
in combination to determine whether they integrate the exception into a
practical application.
The seven identified "practical application" sections of the MPEP, 9
cited in the Revised Guidance under Step 2A(ii), are:
8 In the rare circumstance in which an examiner believes a claim limitation
that does not fall within the enumerated groupings of abstract ideas should
nonetheless be treated as reciting an abstract idea, the procedure described in
of the Guidance for analyzing the claim should be followed. See Revised
Guidance, Section III.C.
9 See MPEP § 2106.05(a}-(c), (e}-(h). Citations to the MPEP herein refer to
revision [R-08.2017]. Sections 2106.05(a), (b), (c), and (e) are indicative of
integration into a practical application, while sections 2106.05(±), (g), and
(h) relate to limitations that are not indicative of integration into a practical
application.
11
Appeal 2018-001813
Application 14/305,870
(1) MPEP § 2106.05(a) Improvements to the Functioning of
a Computer or To Any Other Technology or Technical
Field
(2) MPEP § 2106.05(b) Particular Machine
(3) MPEP § 2106.05(c) Particular Transformation
(4) MPEP § 2106.05(e) Other Meaningful Limitations
(5) MPEP § 2106.05([) Mere Instructions To Apply An
Exception
(6) MPEP § 2106.05(g) Insignificant Extra-Solution Activity
(7) MPEP § 2106.05(h) Field of Use and Technological
Environment
If the recited judicial exception is integrated into a practical
application as determined under one or more of the MPEP sections cited
above, then the claim is not directed to the judicial exception, and the patent-
eligibility inquiry ends. If not, then analysis proceeds to Step 2B.
Step 2B - "Inventive Concept" or "Significantly More"
Under our reviewing courts' precedent, it is possible that a claim that
does not "integrate" a recited judicial exception under Step 2A(ii) is
nonetheless patent eligible. For example, the claim may recite additional
elements that render the claim patent eligible even though a judicial
exception is recited in a separate claim element. 10 The Federal Circuit has
held claims eligible at the second step of the Alice/Mayo test (USPTO Step
2B) because the additional elements recited in the claims provided
"significantly more" than the recited judicial exception ( e.g., because the
additional elements were unconventional in combination). 11 Therefore, if a
10 See, e.g., Diehr, 450 U.S. at 187.
11 See, e.g., Amdocs (Israel), Ltd. v. Openet Telecom, Inc., 841 F.3d 1288,
1300, 1304 (Fed. Cir. 2016); BASCOM Global Internet Services, Inc. v.
12
Appeal 2018-001813
Application 14/305,870
claim has been determined to be directed to a judicial exception under
Revised Step 2A, we must also evaluate the additional elements individually
and in combination under Step 2B to determine whether they provide an
inventive concept (i.e., whether the additional elements amount to
significantly more than the exception itself). 12
Under the Revised Guidance, we must consider in Step 2B whether an
additional element or combination of elements: (1) "Adds a specific
limitation or combination of limitations that are not well-understood,
routine, conventional activity in the field, which is indicative that an
inventive concept may be present;" or (2) "simply appends well-understood,
routine, conventional activities previously known to the industry, specified
at a high level of generality, to the judicial exception, which is indicative
that an inventive concept may not be present." See Revised Guidance,
III.B. 13
AT&T Mobility LLC, 827 F.3d 1341, 1349--52 (Fed. Cir. 2016); DDR
Holdings v. Hotels.com, L.P., 773 F.3d 1245, 1257-59 (Fed. Cir. 2014).
12 The patent eligibility inquiry may contain underlying issues of fact.
Mortg. Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1325
(Fed. Cir. 2016). In particular, "[t]he question of whether a claim element or
combination of elements is well-understood, routine and conventional to a
skilled artisan in the relevant field is a question of fact." Berkheimer v. HP
Inc., 881 F.3d 1360, 1368 (Fed. Cir. 2018).
13 In accordance with existing Step 2B guidance, an Examiner's finding that
an additional element ( or combination of elements) is well understood,
routine, conventional activity must be supported with at least one of the four
specific types of evidence required by the USPTO Berkheimer
Memorandum, as shown above. For more information concerning evaluation
of well-understood, routine, conventional activity, see MPEP § 2106.05(d),
as modified by the USPTO Berkheimer Memorandum (USPTO
Commissioner for Patents Memorandum dated Apr. 19, 2018, "Changes in
13
Appeal 2018-001813
Application 14/305,870
In the Step 2B analysis, an additional element ( or combination of
elements) is not well-understood, routine or conventional unless the
examiner finds an evidentiary basis, and expressly supports a rejection in
writing with, one or more of the following:
1. A citation to an express statement in the
specification or to a statement made by an applicant during
prosecution that demonstrates the well-understood, routine,
conventional nature of the additional element( s) ....
2. A citation to one or more of the court decisions
discussed in MPEP § 2106.0S(d)(II) as noting the well-
understood, routine, conventional nature of the additional
element( s ).
3. A citation to a publication that demonstrates the
well-understood, routine, conventional nature of the additional
element(s) ....
4. A statement that the examiner is taking official
notice of the well-understood, routine, conventional nature of
the additional element( s ) ....
See Berkheimer Memo.
The analysis in Step 2B further determines whether an additional
element or combination of elements:
(a) Adds a specific limitation or combination of
limitations that are not well-understood, routine, conventional
activity in the field, which is indicative that an inventive
concept may be present; or
(b) simply appends well-understood, routine,
conventional activities previously known to the industry,
specified at a high level of generality, to the judicial exception,
Examination Procedure Pertaining to Subject Matter Eligibility, Recent
Subject Matter Eligibility Decision (Berkheimer v. HP, Inc.)" (hereinafter
"Berkheimer Memo").
14
Appeal 2018-001813
Application 14/305,870
which is indicative that an inventive concept may not be
present.
Revised Guidance, and see Berkheimer Memo.
If the Examiner or the Board determines under Step 2B that the
element ( or combination of elements) amounts to significantly more than the
exception itself, the claim is eligible, thereby concluding the eligibility
analysis.
However, if a determination is made that the element and combination
of elements does not amount to significantly more than the exception itself,
the claim is ineligible under Step 2B, and the claim should be rejected for
lack of subject matter eligibility.
Analysis
Step 1 - Statutory Category
Claim 1, as a method (process) claim, recites one of the enumerated
categories of eligible subject matter in 35 U.S.C. § 101. Therefore, the issue
before us is whether it is directed to a judicial exception without
significantly more.
Step 2A(i): Does the Claim Recite a Judicial Exception?
The Examiner determined that claim 1 is directed to "fundamental
economic practices; certain methods of organizing human activities; and an
idea of itself." Final Act. 3.
We conclude claim 1 does not recite the judicial exceptions of either
natural phenomena or laws of nature. We evaluate, de nova, whether
claim 1 recites an abstract idea based upon the Revised Guidance.
15
Appeal 2018-001813
Application 14/305,870
Claim 1 recites, in pertinent part, "[a] method implemented on a
system connected to a plurality of devices via a network," that includes the
steps of:
(1) "[R ]eceiving a registration ... for soliciting pledges
via the network."
(2) ""[R ]eceiving a pledge ... from a contact in an online
contact list, wherein the online contact list is imported ... or
the pledge request is broadcast ... and the pledge is based on
the participant performing an online activity."
(3) "[C]alculating ... a number of online activities
required to trigger the pledge and notifying the participant of
the number."
( 4) "[T]racking ... a number of online activities
performed by the participant."
( 5) "[R ]eceiving an indication ... that the pledge has
been triggered by the participant when ... the participant has
reached the number of required online activities."
( 6) "[I]ssuing a pledge payment request ... to the contact
in the online contact list after the pledge is triggered by the
participant."
(7) "[C]ollecting payment of the pledge."
(8) "[G]enerating a pledge report ... track[ing] a number
of pledges made for the participant, an amount of funds
requested for pledges triggered by the participant, an amount of
funds collected, and an amount of funds past due."
(9) "[D]isbursing the collected payment ... to a
designated account of the participant."
Claims App'x.
The Specification provides context as to what the claimed invention is
directed to. In this case, the Specification discloses that the invention is
"directed not only to raising funds for a traditional college education, but to
16
Appeal 2018-001813
Application 14/305,870
any type of education provided by postsecondary educational institutions,
such as academies, universities, seminaries, institutes of technology, two-
year colleges, vocational schools and career colleges, among other
educational institutions." Spec. ,r 19 (emphasis added).
Appellants' Abstract further describes the invention as: "Methods and
apparatus for online fundraising may include receiving a solicited pledge.
The methods and apparatus may also include receiving an indication that the
pledge has been triggered. The methods and apparatus may include
collecting payment of the pledge and disbursing the collected payment.
Spec. 53 (Abstract).
We determine that claim 1 recites a certain method of organizing
human activity, i.e., a commercial interaction or business relationship that
may also be performed by pen and paper. This type of activity, i.e., raising
funds, as recited in each of limitations (1) through (7), for example, and
aside from the "online" aspects of the claimed invention, includes
longstanding conduct that existed well before the advent of computers and
the Internet, and could be carried out by a human with pen and paper. See
CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1375 (Fed. Cir.
2011) ("That purely mental processes can be unpatentable, even when
performed by a computer, was precisely the holding of the Supreme Court in
Gottschalk v. Benson."). 14
14 Our reviewing court recognizes that "[ a ]n abstract idea can generally be
described at different levels of abstraction." Apple, Inc. v. Ameranth, Inc.,
842 F.3d 1229, 1240 (Fed. Cir. 2016). That need not and, in this case does
not, "impact the patentability analysis." Id. at 1241. Further, "The Board's
slight revision of its abstract idea analysis does not impact the patentability
analysis." Id. Moreover, merely combining several abstract ideas does not
17
Appeal 2018-001813
Application 14/305,870
Under the broadest reasonable interpretation standard, 15 we conclude
limitations (1) through (7), aside from the recited "online" aspects, recite
steps that would ordinarily occur when raising funds via pledges. See Final
Act. 3. For example, participant registration for soliciting pledges
(limitation 1) is an operation that generally would occur before "receiving a
pledge from a contact" (limitation 2). Further, in connection to the
solicitation and receipt of pledges, we conclude limitations (2) through (4)
recite steps that are abstract, whether initiated person-to-person, on paper, or
using a computer.
Thus, under Step 2A(i), we agree with the Examiner that claim 1
recites an abstract idea. We conclude claim 1, as a whole, under our Revised
Guidance, recites a judicial exception of a certain method of organizing
human activity, i.e., a commercial interaction or business relation, and thus
is an abstract idea.
render the combination any less abstract. RecogniCorp, LLC v. Nintendo
Co., 855 F.3d 1322, 1327 (Fed. Cir. 2017) ("Adding one abstract idea (math)
to another abstract idea ... does not render the claim non-abstract."); see
also FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093-94 (Fed.
Cir. 2016) ( determining the pending claims were directed to a combination
of abstract ideas).
15 During prosecution, claims must be given their broadest reasonable
interpretation when reading claim language in light of the specification as it
would be interpreted by one of ordinary skill in the art. In re Am. Acad. of
Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Under this standard,
we interpret claim terms using "the broadest reasonable meaning of the
words in their ordinary usage as they would be understood by one of
ordinary skill in the art, taking into account whatever enlightenment by way
of definitions or otherwise that may be afforded by the written description
contained in the applicant's specification." In re Morris, 127 F.3d 1048,
1054 (Fed. Cir. 1997).
18
Appeal 2018-001813
Application 14/305,870
Step 2A(ii): Judicial Exception Integrated into a Practical Application?
If the claims are directed to a patent-ineligible concept, as we
conclude above, we proceed to the "practical application" Step 2A(ii) in
which we determine whether the recited judicial exception is integrated into
a practical application of that exception by: (a) identifying whether there are
any additional elements recited in the claim beyond the judicial exception(s);
and (b) evaluating those additional elements individually and in combination
to determine whether they integrate the exception into a practical
application.
We find each of the limitations of claim 1 recite abstract ideas as
identified in Step 2A(i), supra, and none of the limitations integrate the
judicial exception of organizing human activity, i.e., a commercial
interaction, into a practical application as determined under one or more of
the MPEP sections cited above. Claim 1, as a whole, merely uses
instructions to implement the abstract idea on a computer or, alternatively,
merely uses a computer as a tool to perform the abstract idea. Thus, on this
record, Appellants have not shown under the guidance of Manual of Patent
Examining Procedure section 2106.05(a) ("Improvements to the Functioning
of a Computer or to Any Other Technology or Technical Field") or section
2106.05(e)("Other Meaningful Limitations"). Nor do Appellants advance
any arguments in the Brief(s) that are directed to the Bilski machine-or-
transformation test, which would only be applicable to the method (process)
claims on appeal. See MPEP §§ 2106.05(b) (Particular Machine) and
2106.05( c) (Particular Transformation).
19
Appeal 2018-001813
Application 14/305,870
Therefore, we conclude the abstract idea is not integrated into a
practical application, and thus the claim is directed to the judicial exception.
Step 2B - "Inventive Concept" or "Significantly More"
If the claims are directed to a patent-ineligible concept, as we
conclude above, we proceed to the "inventive concept" step. For Step 2B we
must "look with more specificity at what the claim elements add, in order to
determine 'whether they identify an "inventive concept" in the application of
the ineligible subject matter' to which the claim is directed." Affinity Labs
of Texas, LLC v. DIRECTV, LLC, 838 F.3d 1253, 1258 (Fed. Cir. 2016)
(quoting Elec. Power Grp., 830 F.3d at 1353).
In applying step two of the Alice analysis, our reviewing court
requires that we "determine whether the claims do significantly more than
simply describe [the] abstract method" and thus transform the abstract idea
into patentable subject matter. Ultramercial, Inc. v. Hulu, LLC, 772 F.3d
709, 715 (Fed. Cir. 2014). We look to see whether there are any "additional
features" in the claims that constitute an "inventive concept," thereby
rendering the claims eligible for patenting even if they are directed to an
abstract idea. Alice, 573 U.S. at 221. Those "additional features" must be
more than "well-understood, routine, conventional activity." Mayo, 566
U.S. at 79.
Limitations referenced in Alice that are not enough to qualify as
"significantly more" when recited in a claim with an abstract idea include, as
non-limiting or non-exclusive examples: adding the words "apply it" ( or an
equivalent) with an abstract idea 16; mere instructions to implement an
16 Alice, 573 U.S. at 221-23.
20
Appeal 2018-001813
Application 14/305,870
abstract idea on a computer17; or requiring no more than a generic computer
to perform generic computer functions that are well-understood, routine and
conventional activities previously known to the industry. 18
Evaluating representative claim 1 under step 2 of the Alice analysis,
we conclude it lacks an inventive concept that transforms the abstract idea of
fund solicitation via pledges into a patent-eligible application of that abstract
idea.
The patent eligibility inquiry may contain underlying issues of fact.
Mortg. Grader, 811 F.3d at 1325. In particular, "[t]he question of whether a
claim element or combination of elements is well-understood, routine and
conventional to a skilled artisan in the relevant field is a question of fact."
Berkheimer, 881 F.3d at 1368.
As evidence of the conventional nature of the recited "network,"
"plurality of devices connected to the network," "system," and "social media
platform" in method claim 1 and system claim 14; "a memory in
communication with a processor" in an apparatus claim 15; and "non-
transitory computer-readable medium," and "computer" in computer
program product claim 20, the Specification discloses:
Computer system ... includes one or more
processors ... connected to a communication
infrastructure . . . .
17 Alice, 573 U.S. at 221, e.g., simply implementing a mathematical
principle on a physical machine, namely a computer (citing Mayo, 566 U.S.
at 84--85).
18 Alice, 573 U.S. at 225, e.g., using a computer to obtain data, adjust
account balances, and issue automated instructions.
21
Appeal 2018-001813
Application 14/305,870
Computer programs ... are stored in main memory
... and/ or secondary memory ... [that] when executed,
enable the computer system ... to perform the features in
accordance with aspects of the present invention ....
[D]ata is ... input and/or accessed ... via
terminals ... such as personal computers (PCs),
minicomputers or tablet computers, mainframe
computers, microcomputers, telephonic devices, or
wireless devices, such as personal digital assistants
("PDAs") or a hand-held wireless devices coupled to a
server 1043, such as a PC, minicomputer or tablet
computer, mainframe computer, microcomputer, or other
device having a processor and a repository for data
and/ or connection to a repository for data, via ... a
network ... such as the Internet or an intranet.
Spec. ,r 124, ,r 128, and ,r 131.
Thus, because the Specification describes the additional elements in
general terms, without describing the particulars, we conclude the claim
limitations may be broadly but reasonably construed as reciting conventional
computer components and techniques, particularly in light of Appellants'
Specification, as quoted above. 19
With respect to this step of the analysis, Appellants argue:
[E]ven if claims 1, 14, 15, and 20 were to constitute
abstract ideas (not admitted), the claims contain elements that
are "sufficient to ensure that the patent in practice amounts to
significantly more than a patent upon [ an ineligible concept]
itself." Id. For example, the claims present aspects that "effect
an improvement [in another] technology or technical field,"
which, according to the Alice Court, may constitute the
19 Claim terms are to be given their broadest reasonable interpretation, as
understood by those of ordinary skill in the art and taking into account
whatever enlightenment may be had from the Specification. In re Morris,
127 F.3d 1048, 1054 (Fed. Cir. 1997).
22
Appeal 2018-001813
Application 14/305,870
"significantly more" necessary to bring the claim into the realm
of patent eligibility ....
Based on the foregoing, the Appellant respectfully
submits that the claimed fully automated solution provides
tangible improvements at least by seamlessly tying together all
the elements in a fundraiser by making it fully automated.
Further, as recently noted by the Court of Appeals for the
Federal Circuit, the claims at issue "do not merely recite the
performance of some business practice known from the pre-
Internet world along with the requirement to perform it on the
Internet. Instead, the claimed solution is necessarily rooted in
computer technology in order to overcome a problem
specifically arising in the realm of computer networks." See,
DDR Holdings, LLC .
. . . . Appellant submits that the claimed features did not
exist prior to the Internet. Thus, the system provides a fully
automated solution where ... [ claim limitations are performed]
... seamlessly by the automated system via the network. As
such, the combination of the fully automated claimed invention
is necessarily rooted in computer technology. The Appellant
submits that the Court of Appeals for the Federal Circuit has
upheld the patentability where the claimed solution is
necessarily rooted in computer technology in order to overcome
a problem specifically arising in the realm of computer
networks.
Br. 16-18 (citation omitted).
In response, we conclude Appellants' reliance on DDR (App. Br. 17)
is misplaced as the recited claims do not improve the computer. In DDR, the
claims at issue involved, inter alia, "web pages displays [with] at least one
active link associated with a commerce object associated with a buying
opportunity of a selected one of a plurality of merchants" ( claim 1 of US
7,818,399). The Federal Circuit found the claims in DDR to be patent-
eligible under step one of the Alice test because "the claimed solution is
23
Appeal 2018-001813
Application 14/305,870
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. Specifically, the Federal Circuit found the claims addressed
the "challenge of retaining control over the attention of the customer in the
context of the Internet." Id. at 1258. We find the rejected claims are
dissimilar to DDR's web page with an active link, and the Specification does
not support the view that the computer related claim elements are
unconventional. See Spec. ,r 124, ,r 128, and ,r 131.
Further, we note the Supreme Court emphasizes, "[t]he 'novelty' of
any element or steps in a process, or even of the process itself, is of no
relevance in determining whether the subject matter of a claim falls within
the§ 101 categories of possibly patentable subject matter." Diehr, 450 U.S.
at 188-89 ( emphasis added). Our reviewing court further guides that
"[e]ligibility and novelty are separate inquiries." Two-Way Media Ltd. v.
Comcast Cable Commc 'ns, LLC, 874 F.3d 1329, 1340 (Fed. Cir. 2017); see
also Affinity Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d 1253, 1263
(Fed. Cir. 2016) (holding that "[ e ]ven assuming" that a particular claimed
feature was novel does not "avoid the problem of abstractness").
With respect to the Step 2B analysis, we conclude, similar to Alice, the
recitation of a method of fund solicitation via pledges as recited in claim 1
that includes "a network," "a plurality of devices connected to the network,"
"a system," and "a social media platform," as argued by Appellants, and
similarly for claims 14, 15, and 20, is simply not enough to transform the
patent-ineligible abstract idea here into a patent-eligible invention under
Step 2B. See Alice, 573 U.S. at 221 ("[C]laims, which merely require
24
Appeal 2018-001813
Application 14/305,870
generic computer implementation, fail to transform [an] abstract idea into a
patent-eligible invention.").
We conclude the claims fail the Step 2B analysis because claim 1, in
essence, merely recites various computer-based elements along with no
more than mere instructions to implement the identified abstract idea using
the computer-based elements.
Therefore, because the claims fail under both the Step 2A and Step 2B
analyses, we sustain the Examiner's§ 101 Rejection RI of independent
claims 1, 14, 15, and 20, and grouped claims 3, 5-13, 18, 19, and23-3I,not
argued separately, and which fall therewith. See Claim Grouping, supra.
2. § 112(a) Rejection R2 of Claims 1, 3, 5-15, 18-20, and 23-31
Issue 2
Appellants argue (Br. 19-20) the Examiner's rejection of claim 1
under 35 U.S.C. § 112(a) as lacking written description support is in error.
These contentions present us with the following issue:
Did the Examiner err in finding the limitation of "calculating by the
system a number of online activities required to trigger the pledge" lacks
written description support by the originally-filed Specification?
Analysis
The Examiner finds:
Claims 1, 14-15 and 20 recite the limitation "calculating
by the system a number of online activities required to trigger
the pledge and notifying the participant of the number".
Examiner has reviewed applicant's disclosure and found that
specification does not reasonably convey that the applicant had
25
Appeal 2018-001813
Application 14/305,870
possession of the subject matter of the amendment at the time
of the filing of the application ....
The examiner asserts that the paragraphs [0036, 0038,
and 0053] do not seem to show how the system calculate[s] a
number of online activities required to trigger the pledge or
[w]hat algorithm is being used for the calculation.
Final Act. 5 (emphasis added).
In response, Appellants contend:
The Appellant respectfully submits that at least
paragraphs [003 8], [0046], [0067], [0081 ], and [O 101] of the
original specification provide support for the claim feature
"calculating by the system a number of online activities
required to trigger the pledge and notifying the participant of
the number," recited in claims 1 and similarly in claims 14, 15,
and 20 ....
As such, the Appellant submits that at least the cited
paragraphs provide support for how the system calculates a
number of online activities required to trigger the pledge.
Accordingly, the Appellant respectfully submits that a skilled
artisan would have understood the inventor to be in possession
of the claimed subject matter at the time of filing based on at
least the above support in the specification.
Br. 19--20 ( emphasis added).
In response to Appellants' contentions, the Examiner concludes:
Examiner respectfully disagrees because [0038] and
[0046] describe ... parameters and rules for the gameathon and
[do] not require the calculating a number of online activities
required to trigger the pledge. [0067] merely show[ s] the results
of the total number of games the participant has played and
total of games the participant needs to play to trigger pledges
made. [0081] discloses the number of games required to trigger
the pledge appear below the bar and [O 101] discloses the
administrator may select the minimum and maximum pledge
amounts that may appeal on the sliding bard with the
26
Appeal 2018-001813
Application 14/305,870
increments the pledge sponsor may view. The administrator
may also set a number of games played that are required to
trigger the pledges. However, [0081] does not show how the
number of games are being calculated and [O 101] does not
show the step of calculating a number of online activities, but
merely describe[ s] the administrator can input or set the number
of games.
Ans. 30.
We disagree with the Examiner because the Appellants' Specification
discloses:
The administrator may ... set a number of games played
that are required to trigger the pledges ... [that] may be based
on a formula ... [which] may determine what number of games
played may trigger a value of pledge dollars. The administrator
may also set a maximum number of games played that are
required to trigger all pledges above a certain amount. The
administrator may also determine an additional number of
games played that may be necessary to trigger a larger than
maximum pledge based, for example, on the incremental size of
the pledge.
Spec. ,r 101.
Consequently, we find that the Specification provides written
description support for calculating a number of online activities required to
trigger the pledge. 20
Therefore, based upon the findings above, and in consideration of the
Specification's disclosure, on this record, we are persuaded of error in the
20 While not before us on Appeal, in light of the Examiner's statements, the
Examiner may wish to consider whether claim 1 meets the enablement
requirement of 35 U.S.C. § 112(a). Although the Board is authorized to
reject claims under 37 C.F.R. § 4I.50(b), no inference should be drawn
when the Board elects not to do so. See Manual of Patent Examining
Procedure (MPEP) § 1213.02.
27
Appeal 2018-001813
Application 14/305,870
Examiner's conclusion that claim 1 's limitation "calculating by the system a
number of online activities required to trigger the pledge" lacks written
description support under§ 112(a). Accordingly, we reverse the Examiner's
written description Rejection R2 of independent claims 1, 14, 15, and 20,
and grouped claims 3, 5-13, 18, and 19, and 23-31 which stand therewith.
3. § 112(b) Rejection R3 of Claims 1, 3, 5-15, 18-20, and 23-31
Issue 3
Appellants argue (Br. 21-22) the Examiner's rejection of claim 1
under 35 U.S.C. § 112(b) as being indefinite is in error. These contentions
present us with the following issue:
Did the Examiner err in rejecting claim 1 because the limitation
"generating a report, wherein the pledge report tracks a number of pledges
made for the participant, an amount of funds requested for the pledges
triggered by the participant, an amount of funds collected, and an amount of
funds past due" is allegedly indefinite under§ 112(b )?
Analysis
Examiner finds:
It is not clear why the a number of pledges (plurality of
pledges) is tracked when the previous steps only mention one
pledge (not plural) being received and one pledge is triggered
by the participant when the system determines the participant
has reached the number of required online activities. Noted that
the previous step also does not recite[] plurality of pledges
triggered by the participant. Further, the feature "an amount of
funds past due" is unclear because it seems to conflict with the
previous steps since the previous steps indicate[] that the
payment of the pledge is already collected.
Final Act. 8.
28
Appeal 2018-001813
Application 14/305,870
Appellants argue:
[C]laim 1 recites "receiving a registration by a participant
for soliciting pledges via the network" and "generating a pledge
report, wherein the pledge report tracks a number of pledges
made for the participant, an amount of funds requested for
pledges triggered by the participant, an amount of funds
collected, and an amount of funds past due." The Appellant
respectfully submits that the claim clearly recites "for soliciting
pledges via the network." Moreover, the Appellant submits that
the claim recites that the pledge report tracks a number of
pledges made for the participant and an amount of funds past
due for the participant.
App. Br. 22.
In response to Appellants' arguments, Examiner concludes:
[T]here no indication of receiving a plurality of pledges
in the claim, but merely ... "receiving an indication ... that the
pledge" ... It is not clear why "a number of pledges made" .. .
is tracked when the previous steps only mention one pledge .. .
being received and ... triggered by the participant when the
system determines the participant has reached the number of
required online activities. Further, the feature "an amount of
funds past due" is unclear because it seems to conflict with the
previous steps since the previous steps indicates that the
payment of the pledge is already collected.
Ans. 31-32.
Appellant's Specification discloses:
The method may also include managing pledge payments
collected by the gameathon ... the system may provide an
administrator a summary of the pledge payments invoiced
and/or pledge payments collected ... pledge payments invoiced
may be for pledges that have been triggered by participants that
have played a required number of games to trigger the funds
pledged ( e.g., an invoice has been sent to the pledge sponsor)
.... If the pledge payment has not been made within a
29
Appeal 2018-001813
Application 14/305,870
predetermined period of time, the system may designate the
pledge payment as past due .... The administrator may receive
a report from the system summarizing the pledge payments
invoiced and the total pledge payments collected.
Spec. ,r 55.
We are persuaded by Appellants' arguments and determine the
Examiner erred in concluding claim 1 is indefinite. In light of the
Appellant's Specification, it is clear that the number of pledges made are
made by participants, i.e., "contacts in an online contact list" of claim 1.
Therefore, based upon the findings above, on this record, we are
persuaded of error in the Examiner's conclusion the disputed limitation is
indefinite under§ 112(b), such that we do not sustain the Examiner's
rejection of claim 1, and grouped claims 3, 5-15, 18-20, and 23-31, which
stand therewith.
4. § 103 Rejection R4 of Claims 1, 3, 5-15, 18-20, and 23-31
Issue 4
Appellants argue (Br. 23-27) the Examiner's rejection of claim 1
under 35 U.S.C. § 103(a) as being obvious over the combination of Carvajal,
Hoffman, Tetreau, and Smith is in error. These contentions present us with
the following issue:
Did the Examiner err in finding the cited prior art combination teaches
or suggests "[a] method implemented on a system connected to a plurality of
devices via a network," that includes, inter alia, the limitations of
"performing an online activity" and "disbursing the collected payment to the
designated account of the participant," as recited in claim 1?
30
Appeal 2018-001813
Application 14/305,870
Analysis
Appellants contend:
Carvajal is directed to a computerized, physical activity-
based fundraising and payment tracking system that permits
fundraising while promoting healthy and environmentally
friendly behaviors. As such, the intended purpose of Carvajal is
to participate in physical activities to raise donations for a
certain entity or organization. In contrast, in Tetreau a student
can answer on-line problems and receive an electronic
allowance based on the grading of the answers. The Appellant
submits that modifying Carvajal, as suggested by the Office
Action, to include on-line learning would render the invention
of Carvajal unfit for its intended purpose of participating in
physical activities to raise donations for a certain entity or
organization while promoting healthy behaviors.
Moreover, the Appellant submits combining the
references, as suggested by the Office Action, would
improperly change the principle operation of Carvajal. See,
MPEP §2143.01. The cited portions of Carvajal disclose that
once the physical activity period has ended, the individual's
donation is automatically collected. As such, in order to receive
the donation, the individual in Carvajal must perform a physical
activity within the physical activity period. There is no
disclosure or suggestion in Carvajal that the physical activity
could be any on-line activity, let alone on-line learning. As
such, combining Carvajal with Tetreau, as suggested by the
Office Action, to include on-line learning would improperly
change the principle operation of Carvajal.
The Appellant further submits that the Examiner is using
hindsight reasoning based upon the disclosure in Appellant's
application to assert it would be obvious to one of skill in the
art to modify Carvajal to do something not suggested in the art.
The claimed subject matter provides a fully automated solution
that allows the participants to solicit pledges and perform online
activities to trigger the pledges solicited .... The Appellant
submits that the combination of the claimed features did not
31
Appeal 2018-001813
Application 14/305,870
exist in one system prior to Appellant's disclosure. Instead, the
Office Action combines Carvajal with a reference directed
towards an athletic monitoring and tracking device (Hoffman),
a reference directed towards online learning (Tetreau), and a
reference directed towards customer assistance (Smith) in order
to arrive at the claimed subject matter. As such, the Appellant
submits that it would not be obvious to modify the disclosure of
Carvajal to result in the claimed subject matter.
Br. 25-26 (italicized emphases added).
In response to Appellants' arguments, Examiner concludes:
Carvajal at least on par. 0026 discloses "fundraising teams raise
funds for their team, group, or entity by becoming healthier
which may not require participation in a physical activity".
Further it is well known in the art prior the filing date that
online activity does not exclude physical activity for example
Nintendo Wii incorporated physical activity in games.
Therefore, the Office asserts that the principle operation of
Carvajal will not change when combining with Tetreau because
Carvajal is not limited to physical activity and because the
online activity can include physical activity ....
Tetreau [at least in Figure 2 and ,r,r [0063]-[0070]] ... is
applied to teach the concept of performing activity by the
participant is an online activity ( e.g. online game learning
activity); and transferring the fund to the participant account
when the activities are fulfilled by the participant. It would have
been obvious to one of ordinary skill in the art to include
performing activity by the participant for receiving fund of
CARVAJAL/HOFFMAN to perform[] on line activity by the
participant for receiving fund and transferring the fund to the
participant account as taught by [Tetreau] in order to provide
the participant a variety of activities for the fundraising and also
transferring fund to the participant would be more efficient and
convenience comparing to using a paper check as shown in
Carvajal ....
[ A ]ny judgement on obviousness is in a sense necessarily a
reconstruction based on hindsight reasoning, but so long as it
32
Appeal 2018-001813
Application 14/305,870
takes into account only knowledge which was within the level
of ordinary skill in the art at the time the claimed invention was
made and does not include knowledge gleaned only from
applicant's disclosure, such a reconstruction is proper" .... The
combination was motivated base on the level of ordinary skill
in the art as seen in the rejection above and not solely on
Applicant's own specification. It would have been readily
recognized by those skill in the art that the advantage or benefit
of determining the appropriate level of activity required to
trigger the distribution does not come solely from Appellant
specification. Similarly, the benefit of providing the participant
a variety of activities for the fundraising, and the benefit of
transferring the fund to the participant based on the performing
activity also does not come solely from Appellant's
specification.
Ans. 33-35 (citations omitted).
We further note an argument that the system is rendered "unsuitable
for its intended purpose" is a "teach away" argument. In re Gordon, 733
F.2d 900, 902 (Fed. Cir. 1984) (The court concluded that in effect, "French
teaches away from the board's proposed modification" because "if the
French apparatus were turned upside down, it would be rendered inoperable
for its intended purpose"). The Federal Circuit has held "[a] reference may
be said to teach away when a person of ordinary skill, upon reading the
reference, would be discouraged from following the path set out in the
reference, or would be led in a direction divergent from the path that was
taken by the applicant." In re Kahn, 441 F.3d 977, 990 (Fed. Cir. 2006)
(quoting In re Gurley, 27 F.3d 551,553 (Fed. Cir.1994)).
We agree with the Examiner's finding that the combination of
Carvajal and Tetreau discloses "performing an online activity," as recited in
33
Appeal 2018-001813
Application 14/305,870
claim 1. 21 (Ans. 4 5--4 7). We are persuaded by the Examiner's claim
construction and conclusion that "online activity does not exclude physical
activity" and find that modifying Carvajal does not render it "unfit for its
intended purpose of participating in physical activities to raise donations" as
argued by Appellants. Further, Appellants' contentions regarding improper
combination of Carvajal, Hoffman, and Tetreau, and impermissible
hindsight in modifying Carvajal, are not persuasive because the Examiner
established motivations to combine the references are found outside of
Applicant's Specification. Final Act. 16, 18, and 19.
Consequently, we agree with the Examiner's findings and legal
conclusions that the combination of Carvajal, Hoffman, Tetreau, and Smith
teach or at least suggest the contested limitations of representative claim 1.
We further note Appellants have not filed a Reply Brief to rebut the
Examiner's factual findings and legal conclusions in the Answer.
Therefore, based upon the findings above, on this record, we are not
persuaded of error in the Examiner's reliance on the cited prior art
combination to teach or suggest the disputed limitations of claim 1, nor do
we find error in the Examiner's resulting legal conclusion of obviousness
under 35 U.S.C. § 103(a).
21 Appellants appear to not have further pursued an argument regarding the
cited references failing to teach or suggest the limitation of "disbursing the
collected payment to the designated account of the participant" after briefly
mentioning it once. Br. 24. We consider this argument waived and do not
address it further. 37 C.F.R. § 4I.37(c)(l)(iv).
34
Appeal 2018-001813
Application 14/305,870
Accordingly, we sustain obviousness Rejection R4 of independent
claim 1, and grouped claims 3, 5-7, 9, 11-15, 18, 20, and 25-31, not argued
separately, and which fall therewith. See Claim Grouping, supra.
5. Rejections R5 of Claim 8 and R6 of Claims 10, 19, 23, and 24
In view of the lack of any substantive or separate arguments directed
to obviousness Rejections R5 and R6 of dependent claims 8, 10, 19, 23,
and 24 over the cited prior-art combinations of record (see Br. 27), we
sustain the Examiner's rejections of these claims. Arguments not made are
waived. 22
CONCLUSIONS
(1) Under our Revised Guidance, governed by relevant case law,
claims 1, 3, 5-15, 18-20, and 23-31 in Rejection RI are not patent-eligible
under 35 U.S.C. § 101, and we sustain the rejection.
(2) The Examiner erred with respect to written description
Rejection R2 of claims 1, 3, 5-15, 18-20, and 23-31 under 35 U.S.C.
§ 112(a), and we do not sustain the rejection.
(3) The Examiner erred with respect to indefiniteness Rejection R3
of claims 1, 3, 5-15, 18-20, and 23-31 under 35 U.S.C. § 112(b ), and we do
not sustain the rejection.
( 4) The Examiner did not err with respect to obviousness
Rejections R4 through R6 of claims 1, 3, 5-15, 18-20, and 23-31 under 35
22 Appellants merely argue, "[ dependent c ]laims ... depend from one of
[independent] claims 1, 14, 15, and 20 ... [and t]herefore ... are allowable
at least based on their respective dependencies." Br. 27.
35
Appeal 2018-001813
Application 14/305,870
U.S.C. § 103(a) over the cited prior art combinations of record, and we
sustain the rejections.
Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, we affirm the Examiner's decision. See 37
C.F.R. § 4I.50(a)(l).
DECISION
We affirm the Examiner's decision rejecting claims 1, 3, 5-15, 18-20,
and 23-31.
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
36