Ex Parte Nguyen et al

Patent Trial and Appeal Board

Jul 27, 2017

13248318 (P.T.A.B. Jul. 27, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
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P.O.Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/248,318 09/29/2011 Djung Nguyen 201003564.01 9302
36738 7590 07/31/2017
ROrTTT7 fr ASSOPTATRS
EXAMINER
750 B STREET OYEBISI, OJO O
SUITE 3120
SAN DIEGO, CA 92101 ART UNIT PAPER NUMBER
3695
NOTIFICATION DATE DELIVERY MODE
07/31/2017 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
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DJUNG NGUYEN,
ABHISHEK PATIL,
and MEGAN MARIE FARRELL
Appeal 2015-006287
Application 13/248,318
Technology Center 3600
Before ANTON W. FETTING, MICHAEL C. ASTORINO, and
BRADLEY B. BAYAT, Administrative Patent Judges.
FETTING, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE1
Djung Nguyen, Abhishek Patil, and Megan Marie Farrell (Appellants)
seek review under 35 U.S.C. § 134 of a non-final rejection of claims 1—20,
1 Our decision will make reference to the Appellants’ Appeal Brief (“Br.,”
filed February 12, 2015) and the Examiner’s Answer (“Ans.,” mailed June 5,
2015), and Non-Final Action (“Non-Final Act.,” mailed December 31,
2014).
Appeal 2015-006287
Application 13/248,318
the only claims pending in the application on appeal. We have jurisdiction
over the appeal pursuant to 35 U.S.C. § 6(b).
The Appellants invented a way of sharing energy among households
using an online service. Specification 1: Field of the Invention. The claims
in the instant application are directed to using a social networking server
with the establishments in the system being “friended” to the server so that
the server notifies establishments of energy sharing opportunities using
“friending” messages. Specification 2:9-11.
An understanding of the invention can be derived from a reading of
exemplary claim 1, which is reproduced below (bracketed matter and some
paragraphing added).
1. System comprising:
processor configured to access instructions on a computer
memory;
energy meter configured for communicating signals to the
processor representing energy use of a first establishment;
display;
the processor configured for executing the instructions to
configure the processor to:
[1] report energy use as indicated by the energy monitor to a
server; and
[2] present on the display a user interface (UI), the UI including
a “barter” selector and “no” selector, the “barter” selector being
selectable to identity a second establishment as requiring
additional energy and prompt the user in the first establishment
to select the second establishment as a recipient, responsive to
which a message is sent from the first establishment upon
selection of the “barter” selector to the second establishment
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that the first establishment wishes to barter with the second
establishment.
Claims 1—20 stand rejected under 35 U.S.C. § 101 as directed to non-
statutory subject matter.
ISSUES
The issues of eligible subject matter turn primarily on whether a user
interface for communicating messages is more than the conventional use of a
generic computer.
ANALYSIS
The Supreme Court:
set forth a framework for distinguishing patents that claim laws
of nature, natural phenomena, and abstract ideas from those that
claim patent-eligible applications of those concepts. First, []
determine whether the claims at issue are directed to one of
those patent-ineligible concepts. [] If so, we then ask, “[wjhat
else is there in the claims before us? [] To answer that question,
[] consider the elements of each claim both individually and “as
an ordered combination” to determine whether the additional
elements “transform the nature of the claim” into a patent-
eligible application. [The Court] described step two of this
analysis as a search for an “‘inventive concept’”—i.e., an
element or combination of elements that is “sufficient to ensure
that the patent in practice amounts to significantly more than a
patent upon the [ineligible concept] itself.”
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Application 13/248,318
Alice Corp., Pty. Ltd. v CLS Bank Inti, 134 S.Ct. 2347, 2355 (2014)
(citing Mayo Collaborative Services v. Prometheus Laboratories, Inc., 132
S.Ct. 1289 (2012)).
To perform this test, we must first determine whether the claims at issue
are directed to a patent-ineligible concept. The Examiner finds the claims
are directed to sharing energy. Non-Final Act. 4.
While the Court in Alice made a direct finding as to what the claims were
directed to, we find that this case’s claims themselves and the Specification
provide enough information to inform one as to what they are directed to.
The preamble to claims 1 and 9 do not recite what the claims are directed
to, but the computer instructions in both independent claims 1 and 9 result in
a user interface with conventional interface controls including a selector and
a message transmitter. The Specification at 2:9—11 recites that the invention
relates to using a social networking server with the establishments in the
system being “friended” to the server so that the server notifies
establishments of energy sharing opportunities using “friending” messages.
Thus, all this evidence shows that claims 1 and 9 are directed to an even
more primitive result than the Examiner finds, viz. sending messages with a
user interface, i.e. communicating messages. None of the claims result in
sharing energy, but instead result in sending messages.
It follows from prior Supreme Court cases, and Bilski in particular, that
the claims at issue here are directed to an abstract idea. Like the risk
hedging in Bilski, the concept of communicating messages is a fundamental
business practice long prevalent in our system of commerce. The use of
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communicating messages is also a building block of generic social
interaction. Thus, communicating messages, like hedging, is an “abstract
idea” beyond the scope of §101. See Alice Corp. Pty. Ltd. at 2356.
As in Alice Corp. Pty. Ltd., we need not labor to delimit the precise
contours of the “abstract ideas” category in this case. It is enough to
recognize that there is no meaningful distinction in the level of abstraction
between the concept of risk hedging in Bilski and the concept of
communicating messages at issue here. Both are squarely within the realm
of “abstract ideas” as the Court has used that term. See Alice Corp. Pty.
Ltd. at 2357.
Further, claims involving data collection, analysis, and display are
directed to an abstract idea. Elec. Power Grp. v. Alstom S.A., 830 F.3d 1350,
1353 (Fed. Cir. 2016) (holding that “collecting information, analyzing it, and
displaying certain results of the collection and analysis” are “a familiar class
of claims ‘directed to’ a patent ineligible concept”); see also In re TLI
Commc ’ns LLC Patent Litig., 823 F.3d at 611; FairWarning IP, LLC v.
Iatric Sys., Inc., 839 F.3d 1089, 1093—94 (Fed. Cir. 2016). Claim 1, unlike
the claims found non-abstract in prior cases, uses generic computer
technology to perform data collection, analysis, and display and does not
recite an improvement to a particular computer technology. See, e.g.,
McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314—15
(Fed. Cir. 2016) (finding claims not abstract because they “focused on a
specific asserted improvement in computer animation”). As such, claim 1 is
directed to the abstract idea of receiving, analyzing, and displaying data.
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The remaining claims merely describe message and user interface content
and parties in the communication. We conclude that the claims at issue are
directed to a patent-ineligible concept.
The introduction of a computer into the claims does not alter the analysis
at Mayo step two:
the mere recitation of a generic computer cannot transform a
patent-ineligible abstract idea into a patent-eligible invention.
Stating an abstract idea “while adding the words ‘apply it’” is
not enough for patent eligibility. Nor is limiting the use of an
abstract idea “‘to a particular technological environment.’”
Stating an abstract idea while adding the words “apply it with a
computer” simply combines those two steps, with the same
deficient result. Thus, if a patent’s recitation of a computer
amounts to a mere instruction to “implement[t]” an abstract
idea “on ... a computer,” that addition cannot impart patent
eligibility. This conclusion accords with the preemption
concern that undergirds our § 101 jurisprudence. Given the
ubiquity of computers, wholly generic computer
implementation is not generally the sort of “additional
feature[e]” that provides any “practical assurance that the
process is more than a drafting effort designed to monopolize
the [abstract idea] itself.”
Alice Corp. Pty. Ltd., 134 S.Ct. at 2358 (citations omitted).
“[T]he relevant question is whether the claims here do more than simply
instruct the practitioner to implement the abstract idea [] on a generic
computer.” Alice Corp. Pty. Ltd., 134 S.Ct. at 2359. They do not.
Taking the claim elements separately, the function performed by the
computer at each step of the process is purely conventional. Using a
computer to display a user interface and send messages amounts to
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electronic data entry and retrieval—one of the most basic functions of a
computer. All of these computer functions are well-understood, routine,
conventional activities previously known to the industry. In short, each step
does no more than require a generic computer to perform generic computer
functions.
Considered as an ordered combination, the computer components of
Appellants’ method add nothing that is not already present when the steps
are considered separately. Viewed as a whole, Appellants’ computer
instructions in the claims simply recite the concept of communicating
messages as performed by a generic computer. To be sure, the claims recite
doing so by advising one to report some commodity usage and display a
screen that provides a way to select a recipient for sending a message to.
The message content itself is of no patentable significance, being discemable
only to the human mind. But this is no more than abstract conceptual advice
on the parameters for such communication and the generic computer
processes necessary to process those parameters, and do not recite any
particular implementation.
The instructions in the claims do not, for example, purport to improve the
functioning of the computer itself. Nor do they effect an improvement in
any other technology or technical field. The 10 pages of Specification do
not bulge with disclosure, but only spell out different generic equipment and
parameters that might be applied using this concept and the particular steps
such conventional processing would entail based on the concept of sending
messages under different scenarios. They do not describe any particular
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improvement in the manner a computer functions. Instead, the claims at
issue amount to nothing significantly more than an instruction to apply the
abstract idea of communicating messages using some unspecified, generic
computer. Under our precedents, that is not enough to transform an abstract
idea into a patent-eligible invention. See Alice Corp. Pty. Ltd. at 2360.
As all claims are structural claims, they:
are no different from [] method claims in substance. The
[equivalent] method claims [would] recite the abstract idea
implemented on a generic computer; the system claims recite a
handful of generic computer components configured to
implement the same idea. This Court has long “wam[ed] ...
against” interpreting § 101“in ways that make patent eligibility
‘depend simply on the draftsman’s art.’
Alice Corp. Pty. Ltd. at 2360.
We are not persuaded by Appellants’ argument that the claims do not
preempt the abstract idea. Br. 8. That the claims do not preempt all forms
of the abstraction or may be limited to the abstract idea in the energy sharing
setting do not make them any less abstract. See OIP Technologies, Inc. v.
Amazon.com, Inc., 788 F.3d 1359, 1360—1361 (2015).
We are not persuaded by Appellants’ argument that the claims fail to fall
under any of the examples. Br. 9. Communicating messages is a
fundamental business practice. That it is used in the context of energy
sharing is inconsequential as the content of the messages is given no weight.
See In re Bernhart, 417 F.2d 1395, 1399 (CCPA 1969). And the recitation
of a user interface is no more than part of a conventional computer.
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We are not persuaded by Appellants’ argument that the claims recite
computer components. Id. Again, simply reciting the use of a conventional
computer does not remove a process from being abstract.
We are not persuaded by Appellants’ argument that the claims are
analogous to those in DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d
1245, 1252 (Fed. Cir. 2014). Br. 10. Appellants do not provide any reason
for making the analogy, other than that the claims recite a specific user
interface. Simply reciting a specific interface design, particularly at the high
level of generality recited, does not show the claims solve a technologically
created problem as in DDR.
In DDR Holdings, the Court evaluated the eligibility of claims
“address[ing] the problem of retaining website visitors that, if adhering to
the routine, conventional functioning of Internet hyperlink protocol,
would be instantly transported away from a host’s website after
‘clicking’ on an advertisement and activating a hyperlink.” Id. at 1257.
There, the Court found that the claims were patent eligible because they
transformed the manner in which a hyperlink typically functions to
resolve a problem that had no “pre-Internet analog.” Id. at 1258. The
Court cautioned, however, “that not all claims purporting to address
Internet-centric challenges are eligible for patent.” Id. For example, in
DDR Holdings the Court distinguished the patent-eligible claims at issue
from claims found patent-ineligible in Ultramercial. See id. at 1258—59
(citing Ultramercial, 772 F.3d at 715—16). As noted there, the
Ultramercial claims were “directed to a specific method of advertising and
content distribution that was previously unknown and never employed on
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the Internet before.” Id. at 1258 (quoting Ultramercial, 772 F.3d at 715—
16). Nevertheless, those claims were patent ineligible because they
“merely recite[d] the abstract idea of ‘offering media content in exchange
for viewing an advertisement, ’ along with ‘routine additional steps such as
updating an activity log, requiring a request from the consumer to view the
ad, restrictions on public access, and use of the Internet.’” Id.
Appellants’ asserted claims are analogous to claims found ineligible in
Ultramercial and distinct from claims found eligible in DDR Holdings.
The ineligible claims in Ultramercial recited “providing [a] media product
for sale at an Internet website;” “restricting general public access to said
media product;” “receiving from the consumer a request to view [a]
sponsor message;” and “if the sponsor message is an interactive message,
presenting at least one query to the consumer and allowing said consumer
access to said media product after receiving a response to said at least one
query.” 772 F.3d at 712. Similarly, Appellants’ asserted claims recite
reporting data and displaying a screen that is usable for some subsequent
message sending. This is precisely the type of Internet activity found
ineligible in Ultramercial.
CONCLUSIONS OF LAW
The rejection of claims 1—20 under 35 U.S.C. § 101 as directed to non-
statutory subject matter is proper.
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DECISION
The rejection of claims 1—20 is affirmed.
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.
§ 1.136(a)(l)(iv) (2011).
AFFIRMED
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