Ex Parte Nammi et al

Patent Trial and Appeal Board

Nov 27, 2017

11231492 (P.T.A.B. Nov. 27, 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.
11/231,492 09/20/2005 Krishnakant Nammi 1015-002 7537
49778 7590 11/29/2017
T ane. Powell PP
EXAMINER
Kevin D. Jablonski HYLINSKI, STEVEN J
PO Box 91302
1420 5th Ave, Suite 4200
Seattle, WA 98111-9402
ART UNIT PAPER NUMBER
3717
NOTIFICATION DATE DELIVERY MODE
11/29/2017 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):
patents @ lanepowell.com
j ablonskik @ lanepowell. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KRISHNAKANT NAMMI and PETER K. SCHNEEBERGER
Appeal 2016-003942
Application 11/231,492
Technology Center 3700
Before KRISTEN L. DROESCH, MICHAEL R. ZECHER, and
CARL M. DeFRANCO, Administrative Patent Judges.
ZECHER, Administrative Patent Judge.
DECISION ON APPEAL
I. STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1—31. Br. 20-26.1 We have jurisdiction under 35 U.S.C.
§ 6. We affirm.
Appellants ’ Invention
Appellants purportedly invented a method, system, and computer-
readable medium for coordinating attendance of an event. Abstract.
According to Appellants, a host associated with a host computer selects an
1 All references to the Brief refer to the Brief filed on August 4, 2015.
Appeal 2016-003942
Application 11/231,492
event from a plurality of events. Id. The selected event includes a special
arrangement for attendance, such as a ticket or fee. Id. The host may send a
notification that includes an invitation to the selected event to at least one
computer associated with an invited guest. Id. In response to the invited
guest accepting the invitation from the host, a transaction for completing the
special arrangement is invoked (e.g., tickets to the event are purchased). Id.
Related Appeal
We previously decided an appeal in the present application on May 1,
2014. See Ex parte Nammi, No. 2012-003402, 2014 WL 1761202 (non-
precedential) (affirming the Examiner’s indefmiteness rejection, but
reversing the Examiner’s anticipation rejection).
Illustrative Claim
Claims 1,18, 22, 25, and 28 are independent claims. Claims 2—17
depend directly or indirectly from independent claim 1, claims 19—21
depend directly from independent claim 18, claims 23 and 24 depend
directly from independent claim 22, claims 26 and 27 depend directly from
independent claim 25, and claims 29-31 depend directly or indirectly from
independent claim 28. Independent claim 1 is illustrative of the disclosed
invention and is reproduced below:
1. A computer-implemented method for coordinating
attendance of an event, the method comprising:
at a host computer associated with a host, selecting an
event from a plurality of events coordinated by others not
associated with the host, the event associated by the host with a
special arrangement for attendance to the event;
sending notification to at least one computer associated
with an invited guest, the notification including an invitation to
the event; and
in response to the invited guest accepting the invitation,
invoking a financial transaction for completing the special
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Application 11/231,492
arrangement such that the host and the invited guest are enabled
to attend the event.
Br. 28 (Claims Appendix).
Rejection on Appeal
Claims 1—31 were rejected under 35 U.S.C. § 101 as being directed to
non-statutory subject matter. Final Act. 4—8.2
Examiner’s Findings
Beginning with the first step in Alice Corp. v. CLS Bank Int’l, 134 S.
Ct. 2347 (2014), the Examiner finds that independent claims 1 and 18 are
directed to the abstract idea of “a host selecting an event to invite human
beings to, sending invitations to people, determining whether people accept
the invitations, and subsequently invoking a financial transaction so that
human beings who wish to attend this event can be guaranteed entry in
exchange for payment.” Final Act. 4. The Examiner also finds that
independent claim 22 is directed to the abstract idea of “a host selecting an
event from a plurality of possible events, sending invitations to people, and
then only initiating a financial transaction to charge people who wish to
attend the event if a predetermined number of invitations are first accepted.”
Id. at 5. Additionally, the Examiner finds that independent claims 25 and 28
are directed to essentially same abstract idea as independent claims 1 and 18,
but “add that[,] if guests purchase tickets for an event, the host is also
guaranteed entry to the event.” Id. at 6. According to the Examiner, these
abstract ideas effectively amount to a human event planner and can be
performed without the aid of a computer. Id. at 4; see also id. at 5—6
2 All references to the Final Action refer to the Final Action entered on
February 9, 2015.
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(arguing that these abstract ideas are long-standing methods for “organizing
human activity”).
Turning to the second step in Alice, the Examiner argues that none of
the operations required by independent claims 1,18, 22, 25, and 28 require a
special purpose computer. Id. at 5. Stated differently, the Examiner argues
that the claimed computing devices are nothing more than general purpose
computing devices. Id.
Appellants ’ Contentions
Appellants contend that, under the first step in Alice, the Examiner
fails to clearly articulate why the claims at issue are directed to methods of
“organizing human activities.” Br. 20. Appellants argue that the Examiner
“has conveniently cherry-picked several aspects of the claims (claim 1 in
particular) that correspond to aspects of human interaction,” and fails to
recognize that the novelty of these claims “lies in the manner in which
several different computers interact with each other in response to different
input from different people.” Id. at 21. Appellants further contend that,
under the second step in Alice, the Examiner fails to acknowledge the
presence of certain limitations that remove the claims at issue from the realm
of the abstract. Id. at 23—24. According to Appellants, the presence of these
limitations (i.e., “selecting an event. . . ,” “sending notification . . . ,” and
“in response to the invited guest accepting the invitation, invoking a
financial transaction”) act to narrow, confine, or otherwise tie down the
claims so as not to cover the abstract idea of organizing human activity. Id.
at 23—25.
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Application 11/231,492
II. ISSUE
Has the Examiner erred in determining that claims 1—31 are directed
to non-statutory subject matter under § 101? In particular, the issue turns on
whether claims 1—31 are directed to a patent-ineligible concept (e.g., an
abstract idea) and, if so, whether the elements of these claims—either
individually or as an ordered combination—transform them into a patent-
eligible application.
III. ANALYSIS
§101 Rejection
Based on the record before us, we do not discern error in the
Examiner’s rejection of independent claims 1—31 as being directed to non-
statutory subject matter under § 101.
A patent may be obtained for “any new and useful process, machine,
manufacture, or composition of matter, or any new and useful improvement
thereof.” 35 U.S.C. § 101. The U.S. Supreme Court has “long held that this
[statutory] provision contains an important implicit exception: Laws of
nature, natural phenomena, and abstract ideas are not patentable.” Alice, 134
S. Ct. at 2354 (citing Association for Molecular Pathology v. Myriad
Genetics, Inc., 133 S. Ct. 2107, 2116 (2013)). Notwithstanding that a law of
nature or an abstract idea, by itself, is not patentable, the practical
application of these concepts may be deserving of patent protection. Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1293—94
(2012).
In Alice, the Supreme Court reaffirmed the framework set forth
previously in Mayo “for distinguishing patents that claim laws of nature,
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natural phenomena, and abstract ideas from those that claim patent-eligible
applications of those concepts.” Alice, 134 S. Ct. at 2355. The first step in
the analysis is to “determine whether the claims at issue are directed to one
of those patent-ineligible concepts.” Id. If the claims are directed to a
patent-ineligible concept, the second step in the analysis is to consider the
elements of the claims “individually and ‘as an ordered combination’” to
determine whether there are additional elements that “‘transform the nature
of the claim’ into a patent-eligible application.” Id. (quoting Mayo, 132 S.
Ct. at 1298, 1297).
Beginning with the first step in Alice, we agree with Examiner that
each of independent claims 1,18, 22, 25, and 28 are directed to an abstract
idea and, therefore, we accept the Examiner’s description of the underlying
abstract idea as effectively amounting to long-standing methods for
“organizing human activity.” See Final Act. 4—6; Ans. 3—5.3 These
independent claims recite steps for organizing human activity that, at best,
include coordinating attendance of an event by selecting the event;
establishing parameters for attending the event (only claims 1,18, and 22);
distributing invitations for the event; and, in response to acceptance of the
invitation and, if applicable, determining whether the parameters have been
satisfied, executing a financial transaction. Br. 28, 33—37. This organization
of human activity that ultimately concludes with the purchase of tickets for
an event is a fundamental economic practice. The Supreme Court has
explained that concepts such as this are abstract ideas beyond the scope of
§ 101 as they are “a fundamental economic practice long prevalent in our
3 All references to the Examiner’s Answer refer to the Answer entered on
December 9, 2015.
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system of commerce.” Alice, 134 S. Ct. at 2356 (quoting Bilski v. Kappos,
561 U.S. 593,611 (2010)).
We are not persuaded by Appellants’ argument that the Examiner fails
to recognize that the novelty of independent claims 1,18, 22, 25, and 28
“lies in the manner in which several different computers interact with each
other in response to different input from different people.” Br. 21. This
purported improvement in automation, however, does not represent a
patentable improvement in computer technology. See Credit Acceptance
Corp. v. Westlake Servs., 859 F.3d 1044, 1055 (Fed. Cir. 2017) (finding that
claims do not improve the functionality of a general purpose computer
where they only permit automation of previously manual processing of loan
applications because “prior cases have made clear that mere automation of
manual processes using generic computers does not constitute a patentable
improvement in computer technology”).
Turning to the second step in Alice, when we consider the claim
elements individually, the independent claims at issue require coordinating
attendance of an event by performing the following steps: (1) selecting the
event; (2) establishing parameters for attending the event (only claims 1,18,
and 22); (3) distributing invitations for the event; and (4) in response to
acceptance of the invitation and, if applicable, determining whether the
parameters have been satisfied, executing a financial transaction. Br. 28,
33—37. These claims further recite the use of various computers (e.g., “a
host computer associated with a host” and “at least one computer associated
with an invited guest” (claim 1); “a host computer system,” “a guest
computer system,” and “an application server” (claim 18); “a plurality of
computers associated . . . with a plurality of invited guests” and “a computer
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associated with [a/the] host” (claims 22 and 28); and “a computer associated
with a recipient” (claim 25)). Id. As Alice explains, use of a computer to
communicate events and invitations between various individuals (like the
“host” and “guest/recipient” here), as well as “use of a computer to obtain
data . . . and issue automated instructions” (like the parameters and
“financial transactions” actions here) are “[some] of the most basic functions
of a computer.” Alice, 134 S. Ct. at 2359.
Nor does performing the steps with a generic computer or server add
an inventive concept. See Intellectual Ventures ILLCv. Capital One Fin.
Corp., 850 F.3d 1332, 1341 (Fed. Cir. 2017) (holding that “claims recit[ing]
both a generic computer element—a processor—and a series of generic
computer ‘components’” do not contain an inventive concept). Indeed, the
specification readily admits that “[t]he invention is operational with
numerous general purpose . . . computing systems or configurations,” and
then proceeds to disclose “[ejxamples of well[-]known computing systems,
environments, and/or configurations [such as] . . . personal computers,
server computers . . . and the like.” Spec. 132 (emphases added).
When considering the claim elements as an ordered combination, each
of independent claims 1,18, 22, 25, and 28, as a whole, is simply indicative
of the abstract idea of organizing human activity, applied using generic
computers or servers. See Alice, 134 S. Ct. at 2359-60 (explaining that the
application of an abstract idea using some unspecified, generic computer or
server is not enough to transform an abstract idea into a patent-eligible
invention). Even if we were to accept Appellants’ characterization of the
claimed invention, these independent claims, at most, offer an improvement
to the previously-known manual process of coordinating attendance of an
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event. See Br. 21 (arguing that the focus of the claim language is
“computers interacting] with each other in automated ways in response to
invitations and acceptances to invitations”). “But merely ‘configuring]’
generic computers in order to ‘supplant and enhance’ an otherwise abstract
manual process is precisely the sort of invention that the Alice Court deemed
ineligible for patenting.” Credit Acceptance Corp., 859 F.3d at 1056
(alteration in original).
Lastly, we agree with the Examiner that the limitations of dependent
claims 2—17, 19-21, 23, 24, 26, 27, and 29-31 do not add anything
significantly more to the abstract idea identified above in the context of
independent claims 1,18, 22, 25, and 28, and, therefore, do not supply an
inventive concept. See Final Act. 6—8. It follows that the Examiner has not
erred in determining that claims 1—31 are directed to non-statutory subject
matter under §101.
IV. CONCLUSION OF LAW
For the foregoing reasons, the Examiner has not erred in rejecting
claims 1—31 as being directed to non-statutory subject matter under § 101.
V. DECISION
We affirm the Examiner’s decision to reject claims 1—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).
AFFIRMED
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