Ex Parte Rule

Patent Trial and Appeal Board

May 25, 2018

11195578 (P.T.A.B. May. 25, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
11/195,578 08/02/2005
49845 7590 05/30/2018
SCHWEGMAN LUNDBERG & WOESSNER/EBAY
P.O. BOX 2938
MINNEAPOLIS, MN 55402
Colin Rule
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
2043.212US 1 1868
EXAMINER
FISHER, PAUL R
ART UNIT PAPER NUMBER
3689
NOTIFICATION DATE DELIVERY MODE
05/30/2018 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):
USPTO@SLWIP.COM
SLW@blackhillsip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte COLIN RULE
Appeal2017-009307
Application 11/195,578 1
Technology Center 3600
Before ANTON W. PETTING, CYNTHIA L. MURPHY, and
BRUCE T. WIEDER, Administrative Patent Judges.
WIEDER, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner's rejection of claims 1-3, 5-9, 11-13, and 15-21. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
CLAIMED SUBJECT MATTER
Appellant's invention "relates generally to the technical field of
automated dispute resolution and, in one example, to a method and system to
design a dispute resolution process." (Spec. ,r 2.)
1 According to Appellant, the real party in interest is EBAY INC. (Appeal
Br. 2.)
Appeal2017-009307
Application 11/195,578
Claims 1, 11 and 21 are the independent claims on appeal and contain
similar language. Claim 11 is illustrative. It recites ( emphasis added):
11. A method to enable a complainant to automatically design
a dispute resolution process, within a computer system, from a
plurality of component processes, the method including:
rece1vmg characterization information, from a
complainant, that is utilized to characterize a dispute;
communicating a user interface, to the complainant, that
includes a menu with all of the plurality of component processes,
the menu including an entry for each of the plurality of
component processes, the entry including a title for the
component process and a selectable order of performance for the
component process, the selectable order of performance
including an empty value corresponding to an unselected
component process;
receive identification of a first single component
process and an order of execution of the first single
component processes in the dispute resolution process
from the user interface;
receive identification of a second single component
process and an order of execution of the second single
component process in the dispute resolution process from the
user interface, the first single component process, the order of
execution of the first single component process, the second single
component processes, and the order of execution of the second
single component process being components that are
individually selected by the user from the user interface menu to
design the dispute resolution process;
determining that the design of the dispute resolution
process is appropriate;
communicating a message to a respondent to request
consent to the selections from the complainant and, after the
consent is received, to finalize the dispute resolution process that
facilitates settlement of the dispute; and
applying a set of predefined outcome rules to the design of
the dispute resolution process and the characterization
information to evaluate complaint's chance of success without a
binding decision.
2
Appeal2017-009307
Application 11/195,578
REJECTIONS
Claims 1-3, 5-9, 11-13, and 15-21 are rejected under 35 U.S.C.
§ 101 as directed to non-statutory subject matter.
Claims 1, 2, 7-9, 11, 12, and 17-21 are rejected under 35 U.S.C.
§ I03(a) as unpatentable in view of Slate II (US 2002/0147604 Al, pub.
Oct. 10, 2002, hereinafter "Slate"), Collins (US 2002/0007362 Al, pub.
Jan. 17, 2002), Vaidyanathan (US 7,630,904 B2, iss. Dec. 8, 2009), and
Walsh (US 2003/0187967 Al, pub. Oct. 2, 2003).
Claims 3 and 13 are rejected under 35 U.S.C. § I03(a) as unpatentable
in view of Slate, Collins, Vaidyanathan, Walsh, and Gullo
(US 2004/0044586 Al, pub. Mar. 4, 2004).
Claims 5, 6, 15, and 16 are rejected under 35 U.S.C. § I03(a) as
unpatentable in view of Slate, Collins, Vaidyanathan, Walsh, and Winters
(US 2001/0034635 Al, pub. Oct. 25, 2001).
ANALYSIS
The§ 1 OJ reiection
"Whoever invents or discovers any new and useful process, machine,
manufacture, or composition of matter, or any new and useful improvement
thereof, may obtain a patent therefor, subject to the conditions and
requirements of this title." 35 U.S.C. § 101. Section 101, however,
"'contains an important implicit exception: Laws of nature, natural
phenomena, and abstract ideas are not patentable.'" Alice Corp. Pty. Ltd. v.
CLS Banklnt'l, 134 S. Ct. 2347, 2354 (2014) (quoting Assoc.for Molecular
Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)).
3
Appeal2017-009307
Application 11/195,578
Alice applies a two-step framework, earlier set out in Mayo
Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66
(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.
Under the two-step framework, it must first be determined if "the
claims at issue are directed to a patent-ineligible concept." Id. If the claims
are determined to be directed to a patent-ineligible concept, then the second
step of the framework is applied to determine if "the elements of the
claim ... contain[] an 'inventive concept' sufficient to 'transform' the
claimed abstract idea into a patent-eligible application." Id. at 2357 (citing
Mayo, 566 U.S. at 72-73, 79).
With regard to step one of the Alice framework, the Examiner
determines that "the claims are directed towards dispute resolution or more
specifically the design of a dispute resolution [process] which is considered
to be an abstract idea." (Final Action 3.) Specifically, the Examiner finds
that "[i]n the current claims the user enters parameters of an agreement
which is then communicated to another party for their consent as such the
claims are directed toward creating a contractual relationship" which "is
considered to be an abstract idea." (Id., citing buySAFE, Inc. v. Google,
Inc., 765 F.3d 1350 (Fed. Cir. 2014).) The Examiner further finds that "the
evaluation of the resolution is comparing predefined outcome rules to the
current design to determine success which is similar to the SmartGene case
where comparing new and stored information and using rules to identify
options, which was found by the courts to be an abstract idea." (Id. at 4,
4
Appeal2017-009307
Application 11/195,578
citing SmartGene, Inc. v. Advanced Biological Labs., SA, 555 F. App'x 950
(Fed. Cir. 2014).
Appellant argues that this determination by the Examiner fails to
"meet the substantial burden of evidence required under the [ Administrative
Procedure Act] in order to maintain a rejection." (Appeal Br. 11-12.)
We are not persuaded of error.
[I]t is sufficient for the examiner to provide a reasoned rationale
that identifies the judicial exception recited in the claim and
explains why it is considered a judicial exception. Therefore,
there is no requirement for the examiner to rely on evidence,
such as publications, to find that a claim is directed to a judicial
exception.
MPEP § 2106.07(a)(III) (citing, e.g., OIP Techs., Inc. v. Amazon.com, Inc.,
788 F.3d 1359, 1362-64 (Fed. Cir. 2015)). Specifically, in OIP, the court
affirmed the district court's decision identifying the abstract idea at issue
without relying on evidence, such as publications. OIP, 788 F.3d at 1362-
63. In view of the above, we find that the Examiner has provided a
sufficient reasoned rationale.
Appellant also argues that "regardless of what the invention may be
directed to, it is the actual language of the claims that are [sic] to be
evaluated under 35 U.S.C. § 101. The Appellant does not agree with the
overly broad summarization of the invention being directed to merely
comparing information to identify an option." (Appeal Br. 12.)
We are not persuaded of error. Under step one of the Alice
framework, we "look at the 'focus of the claimed advance over the prior art'
to determine if the claim's 'character as a whole' is directed to excluded
subject matter." Affinity Labs of Texas, LLC v. DIRECTV, LLC, 838 F.3d
1253, 1257 (Fed. Cir. 2016) (quoting Elec. Power Grp., LLC v. Alstom S.A.,
5
Appeal2017-009307
Application 11/195,578
830 F.3d 1350, 1353 (Fed. Cir. 2016)). Moreover, "[a]n abstract idea can
generally be described at different levels of abstraction." Apple, Inc. v.
Ameranth, Inc., 842 F.3d 1229, 1240 (Fed. Cir. 2016).
The Specification provides evidence as to what the claimed invention
is directed. In this case, the Specification discloses that the claimed
invention relates "to a method and system to design a dispute resolution
process." (Spec. ,r 2.) Claim 11 recites "[a] method to enable a complainant
to automatically design a dispute resolution process ... including: receiving
... information ... to characterize a dispute," "communicating ... a menu
... including an entry for each of the plurality of component processes,"
"receive identification of a first ... component process and an order of
execution," "receive identification of a second ... component process and
an order of execution," "determining that the design ... is appropriate,"
"communicating ... to a respondent to request consent to the selections,"
"and applying a set of predefined outcome rules ... to evaluate complaint's
chance of success."
Although we and the Examiner describe, at different levels of
abstraction, to what the claims are directed, as discussed above, it is
recognized that "[a]n abstract idea can generally be described at different
levels of abstraction." Apple, 842 F.3d at 1240. In this case, that does not
"impact the patentability analysis." See id. at 1241. In view of the above,
we are not persuaded that the Examiner erred in determining that "the claims
are directed towards dispute resolution or more specifically the design of a
dispute resolution [process] which is considered to be an abstract idea"
including "comparing predefined outcome rules to the current design to
determine success." (Final Action 3--4.)
6
Appeal2017-009307
Application 11/195,578
Nor do we find persuasive of error Appellant's argument "that the
SmartGene opinion was indicated by the Federal Circuit as non-precedential.
Thus, it is questionable whether the USPTO and the Examiner can even rely
on the case at all." (Appeal Br. 12.) Federal Circuit Rule 32.l(d) states:
"The court may refer to a nonprecedential disposition in an opinion or order
and may look to a nonprecedential disposition for guidance or persuasive
reasoning .... " Appellant does not persuasively argue why we, also, may
not look to a nonprecedential opinion of the Federal Circuit for guidance or
persuasive reasoning. In view of the above, we do not find Appellant's
argument that the Examiner erred in analogizing Appellant's claims to those
in SmartGene and buySAFE to be persuasive of error.
We also do not find persuasive of error Appellant's argument that the
Examiner cites two cases for different parts of the claim and thus, that this
"illustrates that the claims are not directed to a single alleged abstract idea."
(Appeal Br. 15.) The focus of the analysis is on the claim as a whole.
RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322, 1327 (Fed. Cir. 2017).
A claim may incorporate multiple abstract ideas but that "does not render the
claim non-abstract." Id.
In view of the above, we are not persuaded that the Examiner has
failed to identify an abstract idea to which the claims are directed. (See
Appeal Br. 15.)
Nonetheless, Appellant argues that "the Examiner has not met the first
primafacie burden of identifying an abstract idea." (Appeal Br. 15.) We
disagree. 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, "'together with such
7
Appeal2017-009307
Application 11/195,578
information and references as may be useful in judging of the propriety of
continuing the prosecution of [the] application."' In re Jung, 637 F.3d 1356,
1362 (Fed. Cir. 2011) (brackets in original, quoting 35 U.S.C. § 132(a)).
Here, the Examiner notified Appellant that the claims are directed to a
patent-ineligible abstract idea, i.e., that "the claims are directed towards
dispute resolution or more specifically the design of a dispute resolution
[process] which is considered to be an abstract idea." (Final Action 3.)
Thus, Appellant has been notified of the reason for the rejection with such
information "as may be useful in judging of the propriety of continuing the
prosecution of [the] application." See 35 U.S.C. § 132(a).
We now look to step two of the Alice framework. Step two of the
Alice framework has been described "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."' Alice, 134 S. Ct. at 2355 (citing Mayo,
566 U.S. at 72-73).
The Examiner finds that "the claims simply describe a problem,
announce purely functional steps that purport to solve the problem, and
recite standard computer operations to perform some of those steps, which is
not 'significantly more' than an abstract idea." (Final Action 4--5.)
Appellant disagrees and argues that the "claims go into detail about
communicating a user interface" and that "this unique collection of features
improve the computers used to enable them to support online interaction."
(Appeal Br. 15.)
We are not persuaded of error. Appellant does not indicate where in
the Specification anything other than a generic computer programmed to
8
Appeal2017-009307
Application 11/195,578
perform the steps of the abstract idea of the invention is disclosed. Indeed,
Appellant's Specification discloses that a machine to "perform any one or
more of the methodologies discussed herein" may be, e.g., "a server
computer, a client computer, a personal computer (PC), a tablet PC ... or
any machine capable of executing a set of instruction." (Spec. ,r 180.) The
claims "do not require an arguably inventive set of components or methods,
such as measurement devices or techniques." Elec. Power Grp., 830 F.3d at
1355.
The introduction of a generic computer to implement the claimed
steps does not alter the analysis at the second step. "[T]hese claims in
substance [are] directed to nothing more than the performance of an abstract
business practice ... using a conventional computer. Such claims are not
patent-eligible." DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245,
1256 (Fed. Cir. 2014).
In view of the above, we are not persuaded that the Examiner erred in
rejecting the claims under § 101.
The§ 103(a) re;ections
Claim 1 recites:
the first single component process, the order of execution of the
first single component process, the second single component
processes, and the order of execution of the second single
component process being components that are individually
selected by the user from the user interface menu to design the
dispute resolution process.
Independent claims 11 and 21 contain similar language.
The Examiner finds that Slate teaches "each selection corresponding
to a single component process and specifying the order of performance of
9
Appeal2017-009307
Application 11/195,578
the single component process in the dispute resolution process." (Final
Action 7, citing Slate ,r 216.) The Examiner also finds that Slate
discloses that the system includes a processing module which
communicates an interface shown in figure 196, the interface
includes a plurality of component processes or options in this
case there are two processes which include mediation and
arbitration. The user is then allowed to select which processes
they are interested for example figure 196, shows two paths
where the user or complainant is allowed to order the processes
in Smartpath 3 the order is Mediation then arbitration which can
be seen in figure 198, the alternative to that is Smartpath 5 which
does not include mediation before arbitration which can be seen
in figure 201. By selecting the resolution pathway the user is
selecting which both [sic] the individual processes they wish to
run and also the order in which they are carried out ....
(Id. at 7-8, citing Slate ,r 3 61.)
The Examiner finds that "the Walsh reference merely establishes
other known forms of data entry." (Answer 29.) In particular, the Examiner
finds that Walsh teaches "receiv[ing] identification of a first single
component process and an order of execution of the first single component
processes in the sequence of processes from the user interface (Figure 1 7,
page 9, paragraphs [0094]-[0095]." (Final Action 15.) Thus, the Examiner
determines that
[ s ]ince Slate already allows the user to make selections and to
choose the order in which events in a sequence will be executed,
it would have been obvious to supply a menu interface similar to
the one shown in Walsh as it would provide the user the ability
to see all of the possible processes in a single interface and allow
the user to select and order the individual processes m any
combination they desire as shown in Walsh[].
(Id. at 16.)
10
Appeal2017-009307
Application 11/195,578
Appellant disagrees and argues that "[t]his assertion glosses over the
fact that the user of Slate does not get to separately pick either the
component processes or the order of those processes. Rather, the user is
restricted to simply selecting a Smartpath in which these decision have
already been made .... " (Appeal Br. 22.) Additionally, Appellant argues,
(Id.)
modifying the Smartpaths of Slate to include the user interface
from the network analysis tool of Walsh fails to address
complexities arising from the increased flexibility that Slate
simply did not have to contemplate. These complexities,
however, are addressed in claim 1. For instance, not every
combination of component processes may be valid. Slate need
not worry about this scenario because the combinations present
in the Smartpaths are preselected. However, claim 1 recites the
explicit test to "determine that the design of the dispute
resolution process is appropriate," to determine whether the user
selected options will work.
The Specification discloses that "component processes" include, e.g.,
"a mediation component process," "a non-binding arbitration component
process," and "an arbitration component process." (Spec. ,r 62; see also id.
Fig. 9.)
Slate discloses that a user may select from "SMAR TP ATH 3: ON
CALL MEDIATION+REFER TO PARTNER ARBITRATION" or
"SMARTPATH 5: DOCUMENTS ONLY ARBITRATION." (Slate Fig.
196.) In other words, Slate discloses that a user can select from two options,
i.e., select from two component processes. But claim 1 recites "[ 1] the first
single component process, [2] the order of execution of the first single
component process, [3] the second single component processes, and [ 4] the
order of execution of the second single component process[,] being
11
Appeal2017-009307
Application 11/195,578
components that are individually selected by the user from the user interface
menu." ( Claim 1, emphasis added; see also Claims 11 and 21.) The relied
upon portions of Slate do not disclose individual selection by the user of
processes and individual selection of the order of execution of each process.
Rather, Slate discloses selecting a process wherein one of the processes
includes a predetermined order.
When, as in this case, it is necessary "to look to interrelated teachings
of multiple patents," we must "determine whether there was an apparent
reason to combine the known elements in the fashion claimed by the patent
at issue." KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,418 (2007).
"' [T]here must be some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness.'" Id. ( citing In
re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).
Here, the Examiner relies on Slate for a disclosure of allowing a "user
to make selections and to choose the order in which events in a sequence
will be executed" (see Appeal Br. 16), and relies on Walsh to "merely
establish[] other known forms of data entry" (Answer 29). However, as
discussed above, Slate does not disclose individual selection of processes
and individual selection of the order of execution of each process, as recited
in claim 1. The Examiner does not sufficiently explain why one would have
been motivated to modify Slate to individually select the processes and
order, and to further determine that the process so designed is appropriate.
Nor does the Examiner otherwise find that it would have been obvious to
combine Slate and Walsh to obtain an interface that allows individual
selection by the user of both the component processes and the order of
execution. In view of the above, we are persuaded that the Examiner has not
12
Appeal2017-009307
Application 11/195,578
shown a sufficient rational underpinning to modify Slate in view of Walsh as
set forth in claim 1, i.e., the component processes and the order of execution
being "individually selected by the user." (See Claim 1.) Independent
claims 11 and 21 contain similar language. Therefore, we will reverse the
rejections of independent claims 1, 11, and 21, and the related dependent
claims under§ 103(a).
DECISION
The Examiner's rejection of claims 1-3, 5-9, 11-13, and 15-21 under
35 U.S.C. § 101 is affirmed.
The Examiner's rejections of claims 1-3, 5-9, 11-13, and 15-21
under 35 U.S.C. § 103(a) are reversed.
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
13