Ex Parte NuzziDownload PDFPatent Trial and Appeal BoardNov 14, 201713623482 (P.T.A.B. Nov. 14, 2017) Copy Citation 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. 13/623,482 09/20/2012 Frank Anthony Nuzzi 70481.647 (P1602US1) 7135 132906 7590 11/16/2017 Haynes & Boone, LLP (70481) 2323 Victory Ave. #700 Dallas, TX 75219 EXAMINER ZUKANOVICH, BRANDY A ART UNIT PAPER NUMBER 3684 NOTIFICATION DATE DELIVERY MODE 11/16/2017 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): ipdocketing@haynesboone.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte FRANK ANTHONY NUZZI Appeal 2016-001984 Application 13/623,482 Technology Center 3600 Before BRUCE T. WIEDER, KENNETH G. SCHOPFER, and AMEE A. SHAH, Administrative Patent Judges. SHAH, Administrative Patent Judge. DECISION ON APPEAL1 The Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner’s final decision rejecting claims 1—20. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 Throughout this opinion, we refer to the Appellant’s Appeal Brief (“Appeal Br.,” filed July 17, 2015), Reply Brief (“Reply Br.,” filed Nov. 30, 2015), and Specification (“Spec.,” filed Sept. 20, 2012), and to the Examiner’s Answer (“Ans.,” mailed Sept. 30, 2015) and Final Action (“Final Act.,” mailed Jan. 28, 2015). We note that the Reply Brief filed November 18, 2016 appears to be directed to a different appeal based on the references to different grounds of rejection, the different dates for the filing of the Appeal Brief and mailing of the Examiner’s Answer, and different docket number in the heading. Thus, we only refer to and consider the November 2015 Reply Brief in this appeal. 2 According to the Appellant, the real party in interest is EBAY Inc. Appeal Br. 1. Appeal 2016-001984 Application 13/623,482 STATEMENT OF THE CASE The Appellant’s invention “generally relates to online and/or mobile payments and more particularly to a social purchase system.” Spec. 11. Claims 1, 7, and 14 are the independent claims on appeal. Claim 7 is illustrative of the subject matter on appeal and is reproduced below: 7. A method for providing a social purchase, comprising: receiving a purchase instruction associated with a purchaser social network profile stored in a database, wherein the purchase instruction includes a first item and a merchant associated with the first item; determining that the purchase instruction is associated with a social purchase request; providing a social purchase solicitation for display with a plurality of friend social network profiles that are stored in the database and that are connected to the purchaser social network profile through a social network, wherein the social purchase solicitation includes the first item; monitoring the social purchase solicitation for social purchase opinions directed to the first item by the plurality of friend social network profiles; and determining that the social purchase opinions from the plurality of friend social network profiles include a predetermined number of positive opinions directed to the item and, in response, automatically sending, without any further input associated with the purchaser social network profile, a payment request to make a payment from a purchaser account associated with the purchaser social network profile to a merchant account of the merchant. Appeal Br. 17—18 (Claims App.) 2 Appeal 2016-001984 Application 13/623,482 THE REJECTION Claims 1—20 stand rejected under 35 U.S.C. § 101 as being directed to a judicial exception without significantly more. Final Act. 2. ANALYSIS The Appellant argues claims 1—20 as a group. See Appeal Br. 5, 14. We consider claim 7 as representative of the group; claims 1—6 and 8—20 stand or fall with claim 7. See 37 C.F.R. § 41.37(c)(l)(iv). Under 35 U.S.C. § 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.” The Supreme Court has “long held that this provision contains an important implicit exception: Laws of nature, natural phenomena, and abstract ideas are not patentable.” Alice Corp. Pty. Ltd. v. CLS Bank Inti, 134 S. Ct. 2347, 2354 (2014) (quoting Assn for Molecular Pathology v. Myriad Genetics, Inc., 133 S. Ct. 2107, 2116 (2013)). The Court has, thus, made clear that “[pjhenomena of nature, though just discovered, mental processes, and abstract intellectual concepts are not patentable, as they are the basic tools of scientific and technological work.” Gottschalk v. Benson, 409 U.S. 63, 67 (1972). The Supreme Court in Alice reiterated the two-step framework, set forth previously in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66, 75—77 (2012), “for distinguishing patents that claim laws of nature, 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 that analysis is to “determine whether the claims at issue are directed to one of those patent-ineligible concepts.” Id. (citing 3 Appeal 2016-001984 Application 13/623,482 Mayo, 566 U.S. at 76—79). If so, the second step is to consider the elements of the claims “individually and ‘as an ordered combination”’ to determine whether the additional elements “‘transform the nature of the claim’ into a patent-eligible application.” Id. (citing Mayo, 566 U.S. at 78—79). In other words, the second step is to “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.’” Id. (alteration in original) (citing Mayo, 566 U.S. at 72-73). The Court acknowledged in Mayo, that “all inventions at some level embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas.” Mayo, 566 U.S. at 71. We, therefore, look to whether the claims focus on a specific means or method that improves the relevant technology or are instead directed to a result or effect that itself is the abstract idea, and merely invoke generic processes and machinery. See Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016). Turning to the first step of the Alice analysis, the Appellant does not contest (Appeal Br. 7) the Examiner’s finding that the claims are directed to “to making a purchase based on user opinions which is a fundamental economic practice and thus an abstract idea” (Final Act. 2; see also Ans. 3, citing Bilski v. Kappos, 561 U.S. 593 (2010)). Rather, the Appellant focuses on the second step of the Alice analysis and contends that the “claims include significantly more than simply ‘making a purchase based on user opinion.’” Appeal Br. 7. In applying the second step, the Examiner finds that, considering the individual limitations of the claim individually, “the functions performed at each step of the 4 Appeal 2016-001984 Application 13/623,482 process are purely conventional,” well-understood, and routine activities known in the industry and do “no more than require a generic computer to perform generic computer functions.” Final Act. 2—3. Considering limitations as a combination, the Examiner determines that “[t]he claims at issue amount to nothing significantly more than an instruction to apply the abstract idea of making a purchase based on user opinions using some unspecified, generic computer.” Id. at 3. The Examiner further determines that “[t]he mere recitation of a terminal device and server is not enough to transform an abstract idea into a patent-eligible invention.” Id. The Appellant contends that “when taken as a whole the claims of the present application also include limitations that amount to significantly more than any abstract idea that might be included therein for the same reasons as the claims in DDR Holdings did.” Appeal Br. 11. We disagree. In DDR Holdings, the Federal Circuit determined that the claims addressed the problem of retaining website visitors who, if adhering to the routine, conventional functioning of Internet hyperlink protocol, would be transported instantly away from a host’s website after clicking on an advertisement and activating a hyperlink. DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014). The Federal Circuit, thus, held that the claims were directed to statutory subject matter because they claim a solution “necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks.” Id. The court cautioned that “not all claims purporting to address Internet-centric challenges are eligible for patent,” and noted that in the claims at issue in DDR, the computer network was not “operating in its normal, expected manner.” Id. at 1258. 5 Appeal 2016-001984 Application 13/623,482 In contrast, there is no indication here that the claimed invention claims a solution “necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks.” As the Appellant acknowledges, the problem being addressed is “determining whether to purchase a product.” Reply Br. 4. Although the purchases are online purchases, i.e., the field of the invention is the Internet, the problem is not one unique to the Internet or computers, but rather is a “commercial or social interaction/transaction” issue. Id. We disagree with the Appellant’s assertion that the solution is a technical one. Reply Br. 4, 8. Rather, we agree with and find supported the Examiner’s determination (Final Act. 3; Ans. 5—6) that the steps of claim 7 of receiving, determining, providing, and monitoring data are well- understood, routine, and conventional functions of a generic computer. The Specification provides for generic devices with generic processors, memories, or other components to execute code and data and a communication network, such as the Internet, to perform the functions (Spec. H 55—58, 71), and for a generic computer system for implementing the method with the devices {id. 1 65). There is no further specification of particular technology for performing the steps. See Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350, 1355 (Fed. Cir. 2016) (“Inquiry therefore must turn on any requirements for how the desired result is achieved”). And the Appellant does not provide adequate evidence or reasoning as to how or why the claimed steps are not well-understood, routine, and generic functions of a computer operating in its normal capacities. See Versata Dev. Grp. Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334 (Fed. Cir. 2015); DIRECTV, 838 F.3d at 1263; see also Enfish, 6 Appeal 2016-001984 Application 13/623,482 822 F.3d. at 1336 (focusing on whether the claim is “an improvement to [the] computer functionality itself, not on economic or other tasks for which a computer is used in its ordinary capacity”); DDR Holdings, , 773 F.3d at 1256 (“[A]fter Alice, there can remain no doubt: recitation of generic computer limitations does not make an otherwise ineligible claim patent- eligible. The bare fact that a computer exists in the physical rather than purely conceptual realm ‘is beside the point’” (citation omitted) (quoting Alice, 134 S. Ct. at 2358)). That the computer automatically performs an action of transmitting payment data without further input (see Appeal Br. 11) is insufficient for conferring patent eligibility. Alice, 134 S. Ct. at 2359 (“[U]se of a computer to obtain data, adjust balance accounts, and issue automated instructions; all of these computer functions are ‘well- understood, routine, and conventional activities]’ previously known to the industry.”) (quoting Mayo, 566 U. S. at 71). The introduction of a computer to implement an abstract idea is not a patentable application of the abstract idea. Id. at 2357—58. The computer implementation here is purely conventional and performs basic functions. See id. at 2359-60. Consequently, when considering the claim limitations individually and as an ordered combination, the claimed invention is not necessarily rooted in computer technology to overcome a problem specific to the realm of computers, but instead embodies the use of generic computer components in a conventional manner to perform an abstract idea, which, as the court in DDR Holdings explained, is not patent-eligible. DDR Holdings, 773 F.3d at 1256 (“[T]hese claims [of prior cases] in substance were directed to nothing more than the performance of an abstract business practice on the Internet or using a conventional computer. Such claims are not patent- 7 Appeal 2016-001984 Application 13/623,482 eligible.”); see also Two-Way Media Ltd. V. Comcast Cable Comm., LLC, 2017 WL 4931936 *6, No. 2016-2531, 2016-2532 (Fed. Cir. 2017) (claim reciting steps of processing, routing, controlling, and monitoring data using only conventional technology did not contain an inventive concept). We find unpersuasive the Appellant’s arguments that the claims are similar to those of other Board decisions and Interim Guideline Examples and are thus patent-eligible. See Appeal Br. 12—14; Reply Br. 8—10 (citing July 2015 Update: Subject Matter Eligibility (“Update”) to 2014 Interim Guidance on Subject Matter Eligibility (2014 IEG), 79 Fed. Reg. 74618 (Dec. 16, 2014) (“Interim Guidelines”)). The facts and claims at issue here are different from those cases and hypothetical situation, and we would not be bound, in any event, by a non-precedential decision of a different panel of the Board or by guidelines.3 And, as discussed above, the claim does not provide a technical solution (see Reply Br. 10), but rather a solution that is an abstract idea implemented using a conventional computer. We further find unpersuasive the Appellant’s argument that the Examiner did not establish a prima facie case because the Examiner “do[es] not clearly articulate the reasons why the claimed subject matter is being 3 We note the guidelines are not legal requirements. Cf. In re Fisher, 421 F.3d 1365, 1372 (Fed. Cir. 2005) (“The MPEP and Guidelines ‘are not binding on this court’”) (citations omitted); MPEP, Foreword (“The Manual does not have the force of law or the force of the rules in Title 37 of the Code of Federal Regulations”); and Interim Guidelines at 74619 (“This Interim Eligibility Guidance does not constitute substantive rulemaking and does not have the force and effect of law .. . and is not intended to create any right or benefit, substantive or procedural, enforceable by any party against the Office”). 8 Appeal 2016-001984 Application 13/623,482 characterized as patent ineligible by providing a reasoned rationale that identifies which elements recite the ‘fundamental economic practice.’” Reply Br. 6; see also id. at 7—8. There is no specific requirement that the Examiner must “identify the additional elements in the claims and explain why they do not amount to more than the Abstract idea.” Reply Br. 6. Instead, the Federal Circuit has repeatedly noted that “the prima facie case is merely a procedural device that enables an appropriate shift of the burden of production.” The law is well-established that the USPTO carries its procedural burden of establishing a prima facie case when its rejection satisfies the requirements of 35 U.S.C. § 132 by notifying the Applicant of the reasons for rejection with that “may be useful in judging the propriety of continuing the prosecution of [the] application.” See In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011) (alteration in original) (quoting 35 U.S.C. § 132). Thus, all that is required of the Office is that it set forth the statutory basis of the rejection in a sufficiently articulate and informative manner as to meet the notice requirement of § 132. Id.', see also Chester v. Miller, 906 F.2d 1574, 1578 (Fed. Cir. 1990) (Section 132 “is violated when the rejection is so uninformative that it prevents the applicant from recognizing and seeking to counter the grounds for rejection.”). Here, the Examiner analyzes the claims using the Mayo/Alice framework and clearly articulates the reasons why the claims are not statutory under § 101. See Final Act. 2—3; Ans. 3—7. Specifically, the Examiner notifies the Appellant that the claims are directed to a patent- ineligible abstract idea, under step one of the framework, based on the claim language, and cites to case law as support. Final Act. 2; Ans. 3. And, as discussed above, the Examiner considers the limitations of the claim 9 Appeal 2016-001984 Application 13/623,482 individually as an ordered combination in determining that they do not amount to “significantly more than an instruction to apply the abstract idea of making a purchase based on user opinions using some unspecified, generic computer,” under step two of the framework, and cites to case law as support. Final Act. 3; Ans. 4—7. The Appellant does not contend that the Examiner’s § 101 rejection was not understood or that the Examiner’s rejection, otherwise, fails to satisfy the notice requirements of § 132. Instead, the Appellant’s understanding of the rejection is clearly manifested by Appellant’s responses as set forth in the briefs. The Examiner, thus, has notified the Appellant of the reasons for considering the claims directed to an abstract idea with such information “as may be useful in judging the propriety of continuing the prosecution of [the] application” (35 U.S.C. § 132) and has set forth sufficient reasons in properly setting forth a rejection of the claims under § 101 such that the burden shifted to Appellant to explain why the claims are patent-eligible. For at least the reasons above, we sustain the Examiner’s rejection of claims 1—20 under 35 U.S.C. § 101. DECISION The Examiner’s rejection of claims 1—20 under 35 U.S.C. § 101 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)(l)(iv). AFFIRMED 10 Copy with citationCopy as parenthetical citation