Ex Parte Murthy

Patent Trial and Appeal Board

Oct 3, 2017

11715578 (P.T.A.B. Oct. 3, 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.
11/715,578 03/07/2007 Pawan Rajpanth Murthy 080437.58815US 5999
23911 7590 10/05/2017
CROWELL & MORING LLP
INTELLECTUAL PROPERTY GROUP
P.O. BOX 14300
WASHINGTON, DC 20044-4300
EXAMINER
OSMAN BILAL AHMED, AFAF
ART UNIT PAPER NUMBER
3622
NOTIFICATION DATE DELIVERY MODE
10/05/2017 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):
edocket @ crowell. com
tche @ crowell. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PAWAN RAJPANTH MURTHY1
Appeal 2015-005330
Application 11/715,578
Technology Center 3600
Before BIBHU R. MOHANTY, NINA L. MEDLOCK, and
AMEE A. SHAH, Administrative Patent Judges.
MOHANTY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellant seeks our review under 35 U.S.C. § 134 of the Final
Rejection of claims 9, 11—14, 16, 17, 19-22, and 24, which are all the claims
pending in the application. We have jurisdiction under 35 U.S.C. § 6(b).
SUMMARY OF THE DECISION
We AFFIRM.
1 An assignment of the present application to Bayerische Motoren Werke
Aktiengesellschaft, which is the real party in interest, was recorded on
March 2, 2007.
Appeal 2015-005330
Application 11/715,578
THE INVENTION
The Appellant’s claimed invention is directed to advertising and
online private party vehicle sales (Spec., para. 1). Claim 9, reproduced
below, is representative of the subject matter on appeal.
9. A vehicle transaction server comprising:
a network interface configured to couple the vehicle
transaction server to a network;
a memory containing computer-executable instructions;
and a processor coupled to the network interface and to the
memory, said processor to execute the computer-executable
instructions to:
receive vehicle information, including a vehicle sales
price, over the network from a private seller of a vehicle, wherein
the private seller is not a licensed vehicle dealer,
calculate a periodic payment amount for said vehicle
based on said vehicle sales price provided by the private seller
and predetermined financing terms,
generate, in response to receiving the vehicle information,
a unique vehicle advertisement number; associate the unique
vehicle advertisement number with said vehicle information and
said periodic payment amount, generate an advertisement for
said vehicle which includes said vehicle advertisement number
and the vehicle sales price represented by said periodic payment
amount, access, in response to receiving the advertisement
number from a potential buyer over the network, said vehicle
information and periodic payment amount using only the
advertisement number, and provide the vehicle information and
periodic payment amount to the potential buyer over the network.
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Appeal 2015-005330
Application 11/715,578
THE REJECTIONS
The following rejections are before us for review:
1. Claims 9, 11—14, 16, 17, 19—22, and 24 are rejected under
35U.S.C. § 101 as being directed to non-statutory subject matter.
2. Claims 9, 11, 12, 16, 17, 19, 20, and 24 are rejected under
35 U.S.C. § 103(a) as unpatentable over Shah2, Crites3, Henning4, Jarzmik5,
and Murakami.6
3. Claims 13, 14, 21, and 22 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Shah, Crites, Henning, Jarzmik, Murakami, and Stone.7
FINDINGS OF FACT
We have determined that the findings of fact in the Analysis section
below are supported at least by a preponderance of the evidence.8
ANALYSIS
Rejection under 35 U.S.C. § 101
The Appellant first argues that the rejection of claims 9, 11—14, 16,
17, 19-22, and 24 under 35 U.S.C. § 101 in the Answer is improper because
it is a new ground of rejection that was not approved by the Technology
2 Shah et al., US 2008/0046316 Al, published Feb. 21, 2008
3 Crites, US 7,529,694 B2, issued May 5, 2009
4 Henning et al., US 2005/0119939 Al, published Jun. 2, 2005
5 Jarzmik, US 2004/0128233 Al, published July 1, 2004
6 Murakami, US 2012/0054798 Al, published Mar. 1, 2012
7 Stone et al., US 7,240,025 B2, issued July 3, 2007
8 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(explaining the general evidentiary standard for proceedings before the
Patent Office).
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Application 11/715,578
Center Director or identified as a “New Grounds of Rejection” in accordance
with MPEP § 1207.03 (Reply Br. 1, 2).
This argument is not taken as the rejection of claims 9, 11—14, 16, 17,
19-22, and 24 under 35U.S.C. § 101 was made in the non-final Rejection
mailed September 26, 2014. Thus, the cited rejection is not a new ground of
rejection (see pages 3—8 and specifically page 8 of that rejection mailed
September 26, 2014 which lists the rejection). The Appellant made no
arguments in response to the rejection in the Appeal Brief.
The Appellant has also argued that this rejection under 35 U.S.C.
§ 101 is improper (Reply Br. 2—9).
We agree with the Examiner’s rejection of the claims under 35 U.S.C.
§101.
Under 35 U.S.C. § 101, an invention is patent-eligible if it claims a
“new and useful process, machine, manufacture, or composition of matter.”
35 U.S.C. § 101. The Supreme Court, however, has long interpreted § 101
to include an implicit exception: “laws of nature, natural phenomena, and
abstract ideas” are not patentable. See, e.g., Alice Corp. Pty Ltd. v. CLS
Banklnt’l, 134 S. Ct. 2347, 2354 (2014).
In judging whether claim 9 falls within the excluded category of
abstract ideas, we are guided in our analysis by the Supreme Court’s two-
step framework, described in Mayo and Alice. Id. at 2355 (citing Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1296—97
(2012)). In accordance with that framework, we first determine whether the
claim is “directed to” a patent-ineligible abstract idea. If so, we then
consider the elements of the claim both individually and as “an ordered
combination” to determine whether the additional elements “transform the
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Application 11/715,578
nature of the claim” into a patent-eligible application of the abstract idea. Id.
This is a search for an “inventive concept,” an element or combination of
elements sufficient to ensure that the claim amounts to “significantly more”
than the abstract idea itself. Id. The Court also stated that “the mere
recitation of a generic computer cannot transform a patent-ineligible abstract
idea into a patent-eligible invention.” Alice, 134 S. Ct. at 2358.
Here, we determine that claim 9 is directed to the concept of
generating an advertisement using specific data for the article to be sold.
This is a fundamental economic practice long prevalent in our system of
commerce, and is an abstract idea beyond the scope of § 101.
We next consider whether the additional elements of the claim, both
individually and as an ordered combination, transform the nature of the
claim into a patent-eligible application of the abstract idea, e.g., whether the
claim does more than simply instruct the practitioner to implement the
abstract idea using generic computer components. We conclude that it does
not.
Considering each of the claim elements in turn, the function
performed by the computer system at each claim limitation is purely
conventional. Each claim limitation does no more than require a generic
computer to perform a generic computer function when considered both
individually and as an ordered combination.
For these above reasons, the rejection of claim 9 under 35 U.S.C.
§ 101 is sustained. The Appellant has provided the same arguments for the
remaining rejected claims under this rejection and the rejection of these
claims is sustained as well.
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Application 11/715,578
Rejections under 35 U.S.C. § 103(a)
The Appellant argues that the rejection of claim 9 is improper because
the prior art fails to disclose the claim limitation to
access, in response to receiving the advertisement number from
a potential buyer over the network, said vehicle information and
periodic payment amount using only the advertisement number
(App. Br. 7—10, Reply Br. 9-12). The Appellant further argues that the
combination of the references of Shah, Crites, Henning, Jarzmik, and
Murakami is improper and based on hindsight (App. Br. 11—13).
In contrast, the Examiner has determined in regard to the argued claim
limitation that “[it] is not necessary to provide each customer with their
unique advertisement numbers, since the system would work without
providing the customer said unique advertisement numbers” (Ans. 20). The
Answer sets forth the reasons for the combination of references in the
Answer at pages 9—14.
We agree with the Appellant. In KSR International Co. v. Teleflex
Inc., 550 U.S. 398 (2007) the Supreme Court noted that in an obviousness
analysis “rejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness.” Id. at 418. Here, even taking the argued claim limitation to
be encompassed by the cited prior art, we determine that the combination of
the references of Shah, Crites, Henning, Jarzmik, and Murakami lacks
articulated reasoning with rational underpinnings without impermissible
hindsight to support a conclusion of obviousness. For this reason, this
rejection of claim 1 and its dependent claims is not sustained. Claim 17 has
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Application 11/715,578
been rejected on the same grounds and the rejection of this claim and its
dependent claims is not sustained for the same reason given above.
CONCLUSIONS OF LAW
We conclude that Appellant has not shown that the Examiner erred in
rejecting the claims under 35U.S.C. § 101.
We conclude that Appellant has shown that the Examiner erred in
rejecting the claims under 35 U.S.C. § 103(a) as listed in the Rejections
section above.
DECISION
The Examiner’s rejection of claims 9, 11—14, 16, 17, 19—22, and 24 is
sustained.
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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