Ex Parte Schiestl et al

Patent Trial and Appeal Board

Sep 27, 2018

13673129 (P.T.A.B. Sep. 27, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/673, 129 11/09/2012
10782 7590 10/01/2018
Target Brands Inc.
1000 Nicollet Mall, TPS-3165
Minneapolis, MN 55403
FIRST NAMED INVENTOR
Brent Peter Schiestl
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.
201201454 7246
EXAMINER
SADANANDA, ABHIJIT B
ART UNIT PAPER NUMBER
3624
NOTIFICATION DATE DELIVERY MODE
10/01/2018 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.Mail@target.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BRENT PETER SCHIESTL, JOHN DONALD SOMROCK,
and LIJU CHELAMATTATHIL PAUL
Appeal2017-004289
Application 13/673, 129
Technology Center 3600
Before MAHSHID D. SAADAT, JOHN A. JEFFERY, and
BETH Z. SHAW, Administrative Patent Judges.
SAADAT, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Final Rejection
of claims 1, 3-11, 13, 14, 16-18, and 20, which constitute all of the claims
pending in the application. 2 We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 Appellants identify Target Brands, Inc., which is a subsidiary of Target
Corporation, as the real party in interest. App. Br. 3.
2 Claims 2, 12, 15, and 19 have previously been canceled.
Appeal2017-004289
Application 13/673, 129
STATEMENT OF THE CASE
Introduction
Appellants' Specification describes a method and a system for
facilitating management of business partner relationships between vendors,
by generating a unique relationship key associated with a second vendor and
sending the key to a first vendor, comparing the type of partnership, and
establishing the partner relationship between vendors based on authorizing
the relationship. Spec. ,r,r 3-5.
Claim 1 is exemplary and reproduced below:
A method, comprising:
receiving, by a server device of a vendor management and
maintenance system associated with a retailer, a request from a first
computing device associated with a first vendor to establish a partner
relationship with a second vendor in the vendor maintenance and
management system, the first vendor having a first established
relationship with the retailer in the vendor management and
maintenance system and the second vendor having a second
established relationship with the retailer in the vendor management
and maintenance system;
generating, by the server device, a unique relationship key
associated with the second vendor;
sending, by the server device, one or more signals comprising
the unique relationship key to a second computing device associated
with the second vendor;
receiving, by the server device, one or more signals comprising
information relating to a copy of the unique relationship key from the
first computing device associated with the first vendor;
determining, by the server device, a type of partner relationship
between the first vendor and the second vendor;
comparing, by the server device, the type of partner relationship
between the first vendor and the second vendor to a set of authorized
partner relationships;
based on the comparing, authorizing, by the server device, the
partner relationship between the first vendor and the second vendor
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Application 13/673, 129
when the type of partner relationship between the first vendor and the
second vendor is among the set of authorized partner relationships;
and
based on receiving the copy of the unique relationship key, and
on authorizing the partner relationship between the first vendor and
the second vendor, establishing, by the server device, the partner
relationship between the first vendor and the second vendor.
Rejections on Appeal
Claims 1, 3-11, 13, 14, 16-18, and 20 stand rejected under 35 U.S.C.
§ 101 because the claimed invention is directed to patent-ineligible subject
matter. Final Act. 5---6. 3
ANALYSIS
We have reviewed the Examiner's rejection in light of Appellants'
arguments in the Brief. For the reasons discussed below, we are not
persuaded by Appellants' arguments that the Examiner erred in rejecting
claims 1-20 under 35 U.S.C. § 101.
Principles of Law
Under 35 U.S.C. § 101, an invention is patent-eligible if it claims a
"new and useful process, machine, manufacture, or composition of matter."
35 U.S.C. § 101. The Supreme Court, however, has long interpreted§ 101
to include an implicit exception: laws of nature, natural phenomena, and
abstract ideas. Alice Corp. Pty. Ltd. v. CLS Banklnt'l, 134 S. Ct. 2347,
2354 (2014); Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S.
66, 70-71 (2012). Although an abstract idea, itself, is patent-ineligible, an
application of the abstract idea may be patent-eligible. Alice, 134 S. Ct. at
3 The Examiner has withdrawn the Final Rejections under 35 U.S.C.
§§ 103(a) and 112(b). See Ans. 2-3.
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Application 13/673, 129
2355. Thus, we must 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." Id. ( citing Mayo, 566 U.S. 79, 78). The claim must contain
elements or a combination of elements that are "sufficient to ensure that the
patent in practice amounts to significantly more than a patent upon the
[abstract idea] itself." Id. ( citing Mayo, 566 U.S. 72-73).
"The 'abstract idea' step of the inquiry calls upon us to 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 Tex. v. DirectTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016) (quoting
Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir.
2016)); see also Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed.
Cir. 2016). There is no definitive rule to determine what constitutes an
"abstract idea." Rather, the Federal Circuit has explained that "both [it] and
the Supreme Court have found it sufficient to compare claims at issue to
those claims already found to be directed to an abstract idea in previous
cases." Enfzsh, 822 F.3d at 1334; see also Amdocs (Israel) Ltd. v. Openet
Telecom, Inc., 841 F.3d 1288, 1294 (Fed. Cir. 2016) (explaining that, in
determining whether claims are patent ineligible under § 101, "the decisional
mechanism courts now apply is to examine earlier cases in which a similar
or parallel descriptive nature can be seen-what prior cases were about, and
which way they were decided").
In determining whether a process claim recites an abstract idea, we
must examine the claim as a whole, keeping in mind that an invention is not
ineligible just because it relies upon a law of nature or mathematical
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algorithm. Digitech Image Tech. LLC v. Electronics for Imaging Inc., 7 58
F.3d 1344, 1350 (Fed. Cir. 2014). As noted by the Supreme Court, "an
application of a law of nature or mathematical formula to a known structure
or process may well be deserving of patent protection." Diamond v. Diehr,
450 U.S. 17 5, 187 (1981 ). The "directed to" inquiry asks not whether "the
claims involve a patent-ineligible concept," but instead whether, "considered
in light of the specification, ... 'their character as a whole is directed to
excluded subject matter.'" Enfish, LLC v. Microsoft Corp., 822 F.3d 1327,
1335 (Fed. Cir. 2016) (internal citations omitted). In that regard, we
determine whether the claims "focus on a specific means or method that
improves the relevant technology" or are "directed to a result or effect that
itself is the abstract idea and merely invoke generic processes and
machinery." McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299,
1314 (Fed. Cir. 2016).
Under the second step of the Alice/Mayo framework, we examine the
claim limitations "more microscopically," Elec. Power, 830 F.3d at 1354, to
determine whether they contain "additional features" sufficient to
"'transform the nature of the claim' into a patent-eligible application."
Alice, 134 S. Ct. at 2355, 2357 (quoting Mayo, 566 U.S. at 78). "[M]ere
recitation of concrete, tangible components is insufficient to confer patent
eligibility to an otherwise abstract idea. Rather, the components must
involve more than performance of 'well-understood, routine, conventional
activit[ies]' previously known to the industry." In re TL! Commc 'ns LLC
Patent Litig., 823 F.3d 607,613 (Fed. Cir. 2016) (citing Alice, 134 S. Ct. at
2359).
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Application 13/673, 129
Step One of Alice
The Examiner finds the claims "do not amount to significantly more
than an abstract idea." Final Act. 5. The Examiner further determines that
"the claims are directed to a fundamental economic practice, specifically the
management of business partner relationships." Id.
Appellants argue the claims are related to a "vendor management and
maintenance system that operates in the specific manner," as described in
Paragraphs 30-40 of their Specification. Br. 11-12. Appellants provide no
further clarification to support their assertion that the claims are not directed
to an abstract idea. See Br. 12-16.
Considering step one of the Alice analysis, we conclude the focus of
claim 1 is on a facilitating management of business partner relationships
between vendors, performed by a server device of a vendor management and
maintenance system and computing devices associated with first and second
vendors. See Spec. ,r,r 30-40. Management of business partner relationships
includes functions such as: (a) receiving a request from a first computing
device; (b) generating a unique relationship key; ( c) sending signals
comprising the unique relationship key; ( d) receiving information relating to
a copy of the unique relationship key; ( e) determining a type of partnership;
(f) comparing the type of partnership between vendors with a set of
authorized partner relationships; and (g) establishing the partner relationship
between first and second vendors.
Considering the focus of claim 1 as a whole, therefore, we agree with
the Examiner to the extent we conclude that claim 1 is directed to the
abstract idea of "a fundamental economic practice." We see no meaningful
difference between claim 1 and other methods of collecting, analyzing, and
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Application 13/673, 129
displaying data that courts have also concluded are directed to abstract ideas.
See Electric Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir.
2016) ("The advance they purport to make is a process of gathering and
analyzing information of a specified content, then displaying the results, and
not any particular assertedly inventive technology for performing those
functions"); Digitech, 758 F.3d at 1351 ("Without additional limitations, a
process that employs mathematical algorithms to manipulate existing
information to generate additional information is not patent eligible");
SmartGene, Inc. v. Advanced Biological Labs., SA, 555 Fed. Appx. 950, 955
(Fed. Cir. 2014) ("comparing new and stored information and using rules to
identify medical options" is an abstract idea).
Step Two of Alice
Regarding step two of the Alice analysis, the Examiner finds, and we
agree, "[t ]he additional elements or combinations of elements in the claims
other than the abstract idea per se amount to no more than recitation of
generic computer structure that serves to perform generic computer
functions that are well-understood, routine, and conventional activities
previously known to the pertinent industry." Final Act. 5---6. The Examiner
concludes, and we agree, "[t]hese additional elements include a server
device, simple data transfer, and the use of authorization keys" and "these
additional claim elements do not provide meaningful limitations to transform
the abstract idea into a patent eligible application of the abstract idea such
that the claims amount to significantly more than the abstract idea itself."
Id. at 6.
Appellants contend the claims are directed to something more because
they affect a transformation. Br. 14--16. Specifically, Appellants rely on a
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Application 13/673, 129
district court case, Contentguard Holdings, Inc. v. Amazon.com, Inc., et al,
Case No. 2:13-CV-1112-JRG, at 11 (E.D. Tex, Oct. 5, 2015), and contend
that the claims do not include elements that function in a conventional way
and therefore, recite "significantly more that the underlying abstract idea."
Br. 15.
We are not persuaded by Appellants' argument that the Examiner
erred. Appellants have not identified any cases holding that the transmission
of a request, generation of a unique relationship key, or modification of a
data record can be significantly more than an abstract idea. To the contrary,
the Federal Circuit has recognized that "[m]erely requiring the selection and
manipulation of information ... by itself does not transform the otherwise-
abstract processes of information collection and analysis." Elec. Power, 830
F.3d at 1355. Additionally, [t]he combination of features [of claim 1] results
is a routine configuration of a computer accessing and processing data and
communicating via a network." Id. Thus, claim 1 does not "focus on a
specific means or method that improves the relevant technology," but is
"directed to a result or effect that itself is the abstract idea and merely
invoke[s] generic processes and machinery." McRO, 837 F.3d at 1314. As
asserted by the Examiner, "the 'unique relationship key' represents a simple
communication between the neutral party and each of the interested parties
to verify that both interested parties do in fact intend to form a relationship"
and "[t]he steps also represent very basic concepts of cryptography that have
been used for centuries to secure communications and are now routine
aspects of computing security (i.e., if two people share a common secret they
may then share a secured relationship). Ans. 6.
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Claim 1 essentially recites generic components that perform functions
specified at high levels of generality. This is not enough to transform the
abstract idea here into patent-eligible subject matter. See, e.g., Alice, 134 S.
Ct. at 2360 ( explaining that claims that "amount to 'nothing significantly
more' than an instruction to apply the abstract idea ... using some
unspecified, generic computer .... is not 'enough ' to transform an abstract
idea into a patent-eligible invention" (quoting Mayo, 132 S. Ct. at 1297,
1298)). See also Prism Techs. LLC v. T-Mobile USA, Inc., 696 F. App'x
1014 (Fed. Cir. 2017) ( unpublished) ( abstract process is directed to (1)
receiving identity data from a device with a request for access to resources;
(2) confirming the authenticity of the identity data; (3) determining whether
the identified device is authorized to access the requested resources; and, if
so, (4) permitting access to the requested resources); and Zuili v. Google
LLC, 722 F. App'x 1027 (Fed. Cir. 2018) (unpublished) (although not
reproduced in the opinion, one of the independent claims at issue included
generating a unique code on the server side for identifying a client, and
transmitting the code to the client).
Preemption
Appellants' argument that "the claims of the present Application do
not seek a monopoly over the alleged abstract idea of 'the management of
business partner relationship"' is also not persuasive. Br. 13.
While preemption may signal patent ineligible subject matter,
the absence of complete preemption does not demonstrate
patent eligibility .... Where a patent's claims are deemed only
to disclose patent ineligible subject matter under the Mayo
framework, as they are in this case, preemption concerns are
fully addressed and made moot.
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Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir.
2015); see also OIP Technologies, Inc. v. Amazon.com, Inc, 788 F.3d 1359,
1362---63 (Fed. Cir. 2015).
CONCLUSION
Thus, for the reasons discussed above, we sustain the Examiner's
rejection of claim 1, other independent claims 14 and 18, as well as claims
3-11, 13, 16, 17, and 20 not separately argued, under§ 101.
DECISION
We affirm the Examiner's decision rejecting claims 1, 3-11, 13, 14,
16-18, and 20.
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). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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