Ex Parte Paul et al

Patent Trial and Appeal Board

Nov 3, 2017

13906733 (P.T.A.B. Nov. 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.
13/906,733 05/31/2013 Frank Paul 12461 7706
27752 7590 11/07/2017
THE PROCTER & GAMBLE COMPANY
Global IP Services
Central Building, C9
One Procter and Gamble Plaza
CINCINNATI, OH 45202
EXAMINER
MILLER, BRITTNEY N
ART UNIT PAPER NUMBER
3684
NOTIFICATION DATE DELIVERY MODE
11/07/2017 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):
centraldocket. im @ pg. com
pair_pg @ firsttofile. com
mayer.jk @ pg. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SESHAGIRI RAO TRIPURANA,
LALGUDINATARAJAN PRASAD, FRANK PAUL,
and MARC GRAU PEREZ
Appeal 2016-0038551
Application 13/906,7332
Technology Center 3600
Before MICHAEL C. ASTORINO, KENNETH G. SCHOPFER, and
MATTHEW S. METERS, Administrative Patent Judges.
MEYERS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1—18 and 20. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
1 Our decision references Appellants’ Appeal Brief (“Br.,” filed
September 14, 2015), the Examiner’s Answer (“Ans.,” mailed
December 21, 2015), and Final Office Action (“Final Act.,” mailed April 14,
2015).
2 Appellants identify The Procter & Gamble Company as the real party in
interest (Appeal Br. 1).
Appeal 2016-003855
Application 13/906,733
CLAIMED INVENTION
Appellants’ claims relate “generally to systems and methods for
facilitating business to business commerce and specifically to providing an
online marketplace for a business to secure and/or purchase goods and
services in a business to business transaction” (Spec. 1,11. 4—6).
Claims 1, 8, and 15 are the independent claims on appeal. Claim 1
reproduced below, with minor formatting changes and added bracketed
notations, is illustrative of the subject matter on appeal:
1. A system for facilitating business to business
commerce comprising:
[a] a network component,
[b] a purchaser computing device,
[c] a remote computing device,
[d] a supplier computing device,
[e] a memory component that stores logic that, when
executed by the system, causes the system to perform at least the
following:
[f] register a supplier account for a business supplier
on an online marketplace, wherein registering the supplier
account comprises receiving a catalog of items provided
by the business supplier;
[g] register a purchaser account for a business
purchaser on the online marketplace, wherein the business
purchaser represents a business entity;
[h] provide a user interface to facilitate search,
selection, and purchase of an item by the business
purchaser from the business supplier;
[i] receive an indication from the business purchaser
of a purchase of the item;
[j] facilitate exchange of the item for a
predetermined price between the business purchaser and
the business supplier; and
[k] provide the business purchaser with an element
selected from the group consisting of: service procurement
guide, knowledge management, governance and risk
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management, business intelligence, and combinations
thereof.
REJECTIONS3
Claims 1—18 and 20 are rejected under 35 U.S.C. § 101 as directed to
non-statutory subject matter (see Final Act. 2).
Claims 1, 2, 5, 6, 8, 9, 12, 13, 15, 16, and 18 are rejected under 35
U.S.C. § 103(a) as unpatentable over Yeung (US 2010/0312683 Al, pub.
Dec. 9, 2010) and Fargo (US 2005/0097005 Al, pub. May 5, 2005) (see
Final Act. 4).
Claims 3, 4, 10, 11, and 17 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Yeung, Fargo, and Saito (US 2004/0024712 Al, pub.
Feb. 5, 2004) (see Final Act. 8).
Claims 7, 14, and 20 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Yeung, Fargo, and Bundy (US 2010/0042508 Al, pub.
Feb. 18, 2010) (see Final Act. 12).
3 There appears to be a discrepancy between the Appellants and Examiner
regarding what claims are pending presently. The Examiner appears to
believe claims 1—18 and 20 are pending (see, e.g., Final Act. 2) whereas
Appellants appear to believe that claims 1—20 are pending (see, e.g., Br. 3).
We note that the last set of claims entered, on July 14, 2015, indicate that
claims 1—18 and 20 are indeed the claims which are pending presently.
Notwithstanding, any discrepancy does not affect the disposition of this
appeal because Appellants’ arguments are based solely on the subject matter
of independent claim 1, and Appellants make no arguments with respect to
any dependent claims.
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ANALYSIS
Non-statutory subject matter
Appellants argue claims 1—18 and 20 as a group (see Br. 4). We
select claim 1 as representative. Claims 2—18 and 20 stand or fall with
independent claim 1. See 37 C.F.R. § 41.37(c)(l)(iv).
In rejecting independent claim 1 as being directed to an abstract idea,
the Examiner finds “[t]he claims are directed to the abstract idea of
facilitating commerce between a purchaser and supplier” (Final Act. 2). The
Examiner further finds
[registering a supplier account, registering a purchaser account,
providing an interface, receiving an indication from the
purchaser or a purchase of an item, facilitating exchange of the
item for a predetermined price, and providing the purchaser with
an element are similar to the concepts involving human activity
relating to commercial practices (e.g. [,] hedging in Bilski) that
have been found by the courts to be abstract ideas.
(Id.).
Appellants argue that the Examiner improperly rejected independent
claim 1 as being directed to non-statutory subject matter because “[cjlaim 1
relates to a system of elements combined to perform a set of tangible,
concrete activities, beyond the broad sweep of abstractly facilitating
commerce between a buyer and seller” (Br. 4).
Although we agree with Appellants that an invention is patent-eligible
if it claims a “new and useful process, machine, manufacture, or
composition of matter” (35 U.S.C. § 101) and independent claim 1 is
directed to a system, the Supreme Court has long interpreted § 101 to
include implicit exceptions: “[ljaws of nature, natural phenomena, and
abstract ideas” are not patentable. See, e.g., Alice Corp. Pty. Ltd. v. CLS
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Banklnt’l, 134 S. Ct. 2347, 2354 (2014) (internal quotation and citation
omitted). And, in determining whether independent claim 1 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., 566 U.S.
66,71-73 (2012)).
In accordance with that framework, we first must 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 assess whether the additional elements transform the
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. (internal quotation and citation omitted).
Here, we agree with the Examiner that claim 1 is directed generally
towards “the abstract idea of facilitating commerce between a purchaser and
supplier” (Final Act. 2), and is similar to certain fundamental economic and
conventional business practices that our reviewing courts have found patent
ineligible, like intermediated settlement {see Alice, 134 S. Ct. at 2356—57),
creating a contractual relationship in guaranteeing performance of an online
transaction {see buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1352, 1355
(Fed. Cir. 2014)), “verifying the validity of a credit card transaction over the
Internet” {CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1370
(Fed. Cir. 2011)), and using advertising as a currency on the Internet
{Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 716 (Fed. Cir. 2014)).
Thus, independent claim 1 is directed to a patent-ineligible abstract idea.
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We next consider whether additional elements 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 on generic computer components. Here, we agree with the
Examiner that
[t]he claims at issue do not purport to identify new computer
hardware, but rather, it assumes the availability of generic
computer components for data input, retrieval, and output. The
claims at issue recite only use of a computer in facilitation of a
commercial interaction, the computer defined only by its
function. Ultimately, the recited machine functions solely as an
obvious mechanism for permitting the idea to be achieved. The
claims at issue here do not rise to overriding the routine and
conventional sequence of events ordinarily performed by the
computer, nor do they set forth with any specificity the
interactions of the machine itself.
(Ans. 15). Thus, we find independent claim 1 is directed to an abstract idea
without some element or combination of elements sufficient to ensure that
the claim in practice amounts to significantly more than the abstract idea
itself, and as such, is not patent-eligible under § 101.
Appellants appear to argue that independent claim 1 includes
“significantly more” than the abstract idea because it requires “[a] catalog
provided by a supplier [that] must be received by the system,” “a user
interface [that] must be provided and used to provide an indication of a
desire to purchase an item from the catalog,” and “the purchase must then be
facilitated through to the exchange of payment for the receipt of the item”
(Br. 4). However, we agree with the Examiner that independent claim 1
merely requires a generic computer “performing its basic functions (i.e.
receiving input, displaying data, facilitating a transaction)” (Ans. 16)
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— none of which add inventiveness because they merely require the
application of conventional, well-known analytical steps. See Ultramercial,
772 F.3d at 716 (“[T]he claimed sequence of steps comprises only
‘conventional steps, specified at a high level of generality,’ which is
insufficient to supply an ‘inventive concept’”) (citing Alice, 134 S. Ct. at
2357).
In view of the foregoing, we sustain the Examiner’s rejection under
35 U.S.C. § 101 of independent claim 1, and claims 2—18 and 20, which fall
with independent claim 1.
Obviousness
We are not persuaded by Appellants’ argument that the Examiner
erred in rejecting independent claims 1, 8, and 15 under 35 U.S.C. § 103(a)
because the combination of Yeung and Fargo does not disclose or suggest
“provid[ing] the business purchaser with an element selected from the group
consisting of: service procurement guide, knowledge management,
governance and risk management, business intelligence, and combinations
thereof,” as recited by limitation [k] of independent claim 1, and similarly
recited by independent claims 8 and 15 (see Br. 5). Instead, we agree with,
and adopt the Examiner’s findings and rationales (see Final Act. 4—5 (citing
Yeung || 124, 133); see also Ans. 16—18). We add the following discussion
for emphasis.
Yeung is directed to a system for “conducting] business to business
operations among a plurality of buyer companies and a plurality of seller
companies and securitizing the operating profits of the plurality of seller
companies” (Yeung 13). Yeung discloses that seller companies and buyer
companies register with its e-commerce platform {id. | 88). Yeung discloses
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that its platform enables a seller/supplier to “post a wide spectrum of product
information that public in general and trading partner (s) of the seller
company in particular are interested in. The product information may
include information related to inventory, pricing, use, introduction, etc.” (id.
1124). Yeung also discloses that its platform “displays detailed product
information for products in that particular product catalog on the BUI to the
buyer company to help the buyer company make informed choice of
product(s)” (id. 1133). Yeung further discloses that “[o]nce the seller
company and the buyer company reach an agreement with specific terms
regarding the order, at step 810, the seller company sends a confirmation to
computer server 426. The final contracts and related documents are stored
in the computer server 426 in electronic formats” (id. 1142).
Appellants argue that “[t]he references are silent with respect to the
limitation of providing the business purchaser with an element selected from
the group consisting of: service procurement guide, knowledge
management, governance and risk management, business intelligence, and
combinations thereof’ (Br. 5). More particularly, Appellants argue that the
Examiner improperly construes “knowledge management” to read on “the
provision of product information, as disclosed in the Yeung reference” (id.).
We cannot agree.
During examination, “claims . . . are to be given their broadest
reasonable interpretation consistent with the specification, and . . . claim
language should be read 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) (internal quotation and citations
omitted). However, limitations appearing in the specification, but not
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recited in the claim, will not be read into the claim. See CollegeNet, Inc. v.
Apply Yours elf, Inc., 418 F.3d 1225, 1231 (Fed. Cir. 2005) (although the
specification can be examined for proper context of a claim term, limitations
from the specification will not be imported into the claims).
Here, as the Examiner correctly finds, the phrase “knowledge
management” is not defined by the Specification (see Ans. 17). Thus, in the
absence of any special definition in the Specification for the term
“knowledge management,” we agree with the Examiner that Yeung’s
disclosure regarding “providing the buyer with product information for
products” (see Final Act. 5 (citing Yeung || 124, 133); see also Ans. 16)
constitutes “knowledge management,” within the meaning of independent
claim 1, under a broad, but reasonable, interpretation.
Although Appellants contend that the Specification describes that
“knowledge management is described as a service to be provided by a
supplier” (Br. 5 (citing Spec. 4,11. 20—27)), we agree with the Examiner that
Appellants have “not defined ‘knowledge management’ with reasonable
clarity, deliberateness[,] and precision” (see Ans. 17) such that Appellants
have imparted any special meaning to the term. Here, the cited portion of
Appellants’ Specification discloses:
[embodiments also include services supplier discovery.
This may include service procurement guide for collaborating
from business need to execution, knowledge management, and
seamless integration of platforms. Governance and risk
management is also provided and includes compliance, policy
engagement, risk assessment, information security, governance,
and privacy controls. Business intelligence is also provided and
includes personalization and recommendation, market
intelligence, user intelligence, internal business insights, post
decision analysis, marketplace performance, and market
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optimization. Other features are also provided in more detail
below and depicted in the Appendix.
(Spec. 4,11. 20—27). Thus, we agree with the Examiner that Yeung discloses
“provid[ing] the business purchaser with an element selected from the group
consisting of’ at least “knowledge management” under a broadest
reasonable interpretation, and as such, discloses the argued limitation. We
note this interpretation corresponds with Appellants’ disclosure inasmuch as
the only other occurrence of the term “knowledge” in Appellants’
Specification appears in the content of “[a] sidebar options area 640 is also
provided for providing guidelines, overall performance scorecards,
feedbacks, and a knowledge library” (Spec. 8,11. 16—18; see also Fig. 6).
In view of the foregoing, we sustain the Examiner’s rejection of
independent claims 1, 8, and 15 under 35 U.S.C. § 103(a). We also sustain
the Examiner rejections of claims 2—7, 9—14, 16—18, and 20 which are
argued on the basis of independent claim 1 (see Br. 6—7).
DECISION
The Examiner’s rejection of claims 1—18 and 20 under 35 U.S.C.
§ 101 is affirmed.
The Examiner’s rejections of claims 1—18 and 20 under 35 U.S.C.
§ 103(a) are affirmed.
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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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