Ex Parte Salloum

Patent Trial and Appeal Board

Nov 23, 2018

10032213 (P.T.A.B. Nov. 23, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
10/032,213 12/21/2001
59582 7590 11/23/2018
DICKINSON WRIGHT PLLC
2600 WEST BIG BEA VER ROAD
SUITE 300
TROY, MI 48084-3312
UNITED ST A TES OF AMERICA
FIRST NAMED INVENTOR
Houssam Salloum
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.
59743-4 3461
EXAMINER
MISIASZEK, AMBER AL TSCHUL
ART UNIT PAPER NUMBER
3624
MAIL DATE DELIVERY MODE
11/23/2018 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HOUSSAM SALLOUM 1
Appeal2017-010128
Application 10/032,213
Technology Center 3600
Before CAROLYN D. THOMAS, J. JOHN LEE, and
ADAM J. PYONIN, Administrative Patent Judges.
THOMAS, Administrative Patent Judge.
DECISION ON APPEAL
Appellant seeks our review under 35 U.S.C. § 134(a) of the
Examiner's Non-Final Rejection of claims 1-5, all the pending claims in the
present application. Claims 6-20 are canceled. See Claims Appendix. We
have jurisdiction over the appeal under 35 U.S.C. § 6(b ).
We REVERSE.
The present invention relates generally to selecting a cargo carrier.
See Abstract.
1 Appellant names the sole inventor, Houssam Salloum, as the real party in
interest (App. Br. 3).
Appeal2017-010128
Application 10/032,213
Claim 1 is illustrative:
1. A method for selecting a cargo carrier and
arranging transportation for cargo, the method comprising:
storing electronically on a plurality of individual
computer systems cargo transportation data relating to a
plurality of cargo transportation options available from a
plurality of cargo carriers;
electrically connecting a host computer system
with the plurality of individual computer systems to provide the
host computer system with access to the cargo transportation
data of the cargo carriers;
connecting the host computer to a user display via
the internet;
providing the user display with a port of loading
graphical user interface which includes a manually rotatable
global illustration and a port of loading selectable list that is
displayed as a
function of manual rotation of the global illustration by the
user;
receiving at the host computer system a user
selection from the port of loading locations displayed on the
port of loading graphical user interface;
providing the user display with a port of discharge
graphical user interface which includes a manually rotatable
global illustration and a port of discharge selectable list that is
displayed as a function of manual rotation of the global
illustration by the user;
receiving at the host computer system a user
selection from the port of discharge locations displayed on the
port of discharge graphical user interface;
providing the user display with a cargo
transportation graphical user interface including a cargo type
selectable list comprising at least two of dimensional cargo,
vehicles cargo, break bulk cargo, and containers cargo;
receiving at the host computer system a user
selection from the cargo type selectable list;
automatically comparing by the host computer
system the user selections received from the port of loading
selectable list, the port of discharge selectable list, and the cargo
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Application 10/032,213
type selectable list to the cargo transportation data for
determining a plurality of matching transportation options;
providing the user display with a selectable list of
the plurality of matching transportation options along with their
respective price quotes;
receiving at the host computer system a user
selection of a preferred cargo transportation option from the
plurality of matching transportation options.
Appellant appeals the following rejections:
RI. Claim 1 2 is rejected on the ground of nonstatutory double
patenting as being unpatentable over claims 21, 23, and 25 of copending
Application No. 11/666,936 matter (Non-Final Act. 3--4).
R2. Claims 1-5 are rejected under 35 U.S.C. § 101 as being directed
to patent-ineligible subject matter (Non-Final Act. 5-8).
We review the appealed rejections for error based upon the issues
identified by Appellant, and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).
ANALYSIS
Provisional Double Patenting Rejection
The Examiner rejects claim 1 on the ground of nonstatutory double
patenting as being unpatentable over claims 21, 23, and 25 of copending
Application No. 11/666,936 (Non-Final Act. 4).
Appellant contends that if "the double patenting rejection will be the
only remaining issue[, it] ... should be withdrawn so that the present
application can issue as a patent without a terminal disclaimer" (App. Br.
2 Claims 6 and 13 are canceled.
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Application 10/032,213
7-8), i.e., because a terminal disclaimer was filed in the co-pending
Application No. 11/666,936.
In response, the Examiner concludes that "a terminal disclaimer still
needs to be filed to overcome the double patenting rejection" (Ans. 3).
In the Reply Brief, Appellant points out that Application No.
11/66,936 "was expressly abandoned on July 21, 2017" (Reply Br. 2).
Given the abandonment of Application No. 11/66,936, we agree with
Appellant that the double patenting rejection is now moot.
Accordingly, we reverse the double patenting rejection.
Rejection under§ 101
Issue: Did the Examiner err in finding that the claims are directed to
patent-ineligible subject matter?
Alice Corp. Pty. v. CLS Bankint'l, 134 S. Ct. 2347 (2014), identifies a
two-step framework for determining whether claimed subject matter is
judicially excepted from patent eligibility under § 101. According to Alice
step one, "[ w ]e must first determine whether the claims at issue are directed
to a patent-ineligible concept," such as an abstract idea. Alice, 134 S. Ct. at
2355. "If the claims are not directed to an abstract idea [or other patent-
ineligible concept], the inquiry ends. If the claims are 'directed to' an
abstract idea, then the inquiry proceeds to the second step of the Alice
framework." McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299,
1312 (Fed. Cir. 2016). In analyzing whether a claim is directed to an
abstract idea, we look to other decisions where courts have considered
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Application 10/032,213
whether similar concepts are abstract See Amdocs (Israel) Ltd. v. Openet
Telecom, Inc., 841 F.3d 1288, 1294 (Fed. Cir. 2016).
In this regard, with respect to independent method claim 1, the
Examiner determines that the claims are directed to "actions [for] ...
arranging transportation for cargo ... [ such as,] collecting and comparing
known information, comparing data to determine a risk level, comparing
new and stored information and using rules to identify options, using
categories to organize, store, and transmit information, data recognition and
storage" (Non-Final Act. 7). This is an adequate basis for determining that
the claims are directed to an abstract idea.
Here, Appellant does not challenge the Examiner's "abstract idea"
determination, but rather directs all arguments toward "the claims [having]
... additional limitations that amount to significantly more" pursuant to
Alice step two (see App. Br. 8-13). If an Appellant fails to present
arguments on a particular issue----or, more broadly, on a particular
rejection-----the Board will not, as a general matter, review sua sponte those
uncontested aspects of the rejection. (See, e.g., Hyatt v. Dudas, 551 F.3d
1307, 1313-14 (Fed. Cir. 2008) (the Board may treat arguments Appellant
failed to make for a given ground of rejection as waived)).
As such, we shall treat Appellant's arguments ( or lack thereof) as
conceding that the claims are directed to the Examiner's proffered abstract
idea. Thus, we agree with the Examiner that the claims are directed to an
abstract idea.
We now tum to the second step of the Alice framework: "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
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Application 10/032,213
than a patent upon the [ineligible concept] itself."' Alice, 134 S. Ct. at 2355
(alteration in original) (quoting Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 72-73 (2012)).
Appellant contends that "there are additional limitations that amount
to significantly more that this abstract idea" (App. Br. 8). Specifically,
Appellant highlights that the Examiner has "mistakenly overlook[ ed] the
more specific technological and structural recitations in the claims of at least
a 'manually rotatable global illustration' as well as a 'cargo transportation
graphical interface' which are presented on the graphical user interface to
facilitate the selecting and arranging of cargo transportation" (id. at 9),
which Appellant contends is not merely routine and conventional (id. at 10).
The Examiner determines that "the claims amount to nothing more
than requiring a generic computer to perform generic computer functions
that are well-understood, routine and conventional activities" (Non-Final
Act. 5). The Examiner further concludes that "[t]he problem being solved is
old and well known in the pre-computer world" (Ans. 3), and "the technical
functions recited are generic in nature and applied to a generic computer
environment [that] ... do not improve another technology or technical field"
(id. at 4). The Examiner also distinguishes Appellant's claims from DDR
Holdings3 by noting that the present claims are "the application of non-
computer commerce to computer environments for the purpose of
convenience[,] ... a problem [that] is purely commercial in nature" (id. at
5).
Although we understand the claimed invention may use "generic
computer, network, and Internet components, none of which is inventive by
3 DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014).
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itself," the "inventive concept can be found in the non-conventional and
non-generic arrangement of known, conventional pieces." BASCOM Global
Internet Services, Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1349--52 (Fed.
Cir. 2016).
With that in mind, we find that, even if we agree with the Examiner
that generic components are being utilized, the Examiner has not addressed
Appellant's specific arguments supra pertaining to whether the claimed
"manually rotatable global illustration" and/or "a cargo transportation
graphical interface" used in combination with the generic components
embody non-conventional and non-generic arrangements of known
conventional pieces, i.e., necessarily requiring the GUI to operate in an
unconventional manner.
For example, Appellant directs our attention to the Specification (see
App. Br. 11 ), which describes the aforementioned additional limitations,
e.g., "a graphic illustration may include a map ... with various click-on
portions so that a user can point-and-click" (4:22-24) and "[t]he user 40 can
be assisted by a global illustration 82. The global illustration 82 can be
rotated by clicking on arrows 83 or 84 to show a desired part of the world"
(5:22-23). In other words, Appellant's GUI display page is assisted by
additional tools, e.g., a manual global illustration tool.
The Examiner has not set forth with sufficient specificity or provided
any finding that the specifically claimed manner of selecting a cargo carrier
using the manually rotatable global illustration is well-understood, routine,
or conventional. Berkheimer v. HP Inc., 881 F.3d 1360, 1369 (Fed. Cir.
2018) ("Whether something is well-understood, routine, and conventional to
a skilled artisan at the time of the patent is a factual determination."); cf
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Application 10/032,213
Trading Techs. Int'!, Inc. v. CQG, INC., 675 F. App'x 1001, 1004 (Fed. Cir.
2017) ("[T]he specific structure and concordant functionality of the
graphical user interface are removed from abstract ideas, as compared to
conventional computer implementations of known procedures. Thus the ...
criteria of Alice Step 2 were [] met.").
Thus, we are constrained by the record, under Alice step two, to
determine that the Examiner has not properly considered the elements of the
claims, both individually and "as an ordered combination," by making a
factual determination to determine whether the additional elements
identified by Appellant transform the Examiner's asserted abstract idea into
a patent-eligible application.
For the above reasons, the Examiner's rejection of claims 1-5 under
35 U.S.C. § 101 is reversed.
DECISION
We reverse the Examiner's§ 101 rejection and double patenting
rejection.
REVERSED
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