Ex Parte Schulz

Patent Trial and Appeal Board

Jun 16, 2017

13796982 (P.T.A.B. Jun. 16, 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.
13/796,982 03/12/2013 Egan Echeverria Schulz 70481.766 (P1785US1) 8400
132906 7590 06/20/2017
Haynes & Boone, LLP (70481)
2323 Victory Ave. #700
Dallas, TX 75219
EXAMINER
AIRAPETIAN, MILA
ART UNIT PAPER NUMBER
3625
NOTIFICATION DATE DELIVERY MODE
06/20/2017 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 EGAN ECHEVERRIA SCHULZ
Appeal 2016-003811
Application 13/796,982
Technology Center 3600
Before CAROLYN D. THOMAS, DEBRA K. STEPHENS, and
AARON W. MOORE, Administrative Patent Judges.
THOMAS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner’s Final Rejection of claims 1—22, all the pending claims in the
present application. See Claim Appendix. We have jurisdiction over the
appeal under 35 U.S.C. § 6(b).
We AFFIRM.
The present invention relates generally to triggering one or more
subsequent purchases after an initial purchase. See Spec. 1:8—9.
Appeal 2016-003811
Application 13/796982
Claim 1 is illustrative:
1. A system comprising:
one or more memories;
one or more hardware processors in
communication with the one or more memories and operable to:
receive a communication including an indication
of a purchase of an initial product by a user on a purchase date;
determine, at least in part from the initial product,
what follow on products correspond to the initial product;
determine, at least in part from the follow on
products, what a cost is for each of the follow on products;
determine, at least in part from the initial product
and the purchase date, a schedule for purchasing the follow on
products based on locations detected by a user device;
determine, at least in part from the follow on
products, the cost for each of the follow on products, and the
schedule, a budget for purchasing the follow on products; and
storing, in the one or more memories, information
representative of the budget and the schedule.
Appellants appeal the following rejections:
Claims 1—22 are rejected under 35 U.S.C. § 101 because the claimed
invention is directed to non-statutory subject matter (Ans. 3).
We review the appealed rejections for error based upon the issues
identified by Appellants, and in light of the arguments and evidence
produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)
(precedential).
ANALYSIS
35 U.S.C. § 101: Claims 1-22
Issue: Did the Examiner err in finding that the claims are directed to
non-statutory subject matter?
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The Examiner finds that the claims “are directed to . . . the abstract
idea of selling and buying a product. . . [and do] no more than require a
generic computer” (Final Act. 2), and “the claims at issue amount to nothing
significantly more than an instruction to apply the abstract idea” (id. at 3; see
also Ans. 4). We agree with the Examiner.
A patent may be obtained for “any new and useful process, machine,
manufacture, or composition of matter, or any new and useful improvement
thereof.” 35 U.S.C. § 101. The Supreme Court has 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); Gottschalk v. Benson, 409
U.S. 63, 67 (1972) (“Phenomena 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.”). Notwithstanding that
a law of nature or an abstract idea, by itself, is not patentable, the application
of these concepts may be deserving of patent protection. Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1293—94
(2012). In Mayo, the Court stated that “to transform an unpatentable law of
nature into a patent eligible application of such a law, one must do more
than simply state the law of nature while adding the words ‘apply it.”’ Id. at
1294 (citation omitted).
In Alice, the Court reaffirmed the framework set forth previously in
Mayo “for distinguishing patents that claim laws of nature, natural
phenomena, and abstract ideas from those that claim patent-eligible
applications of these concepts.” Alice, 134 S. Ct. at 2355. The first step in
the analysis is to “determine whether the claims at issue are directed to one
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of those patent-ineligible concepts.” Id. If the claims are directed to a
patent-ineligible concept, then the second step in the analysis is to consider
the elements of the claims “individually and ‘as an ordered combination”’ to
determine whether there are additional elements that “‘transform the nature
of the claim’ into a patent-eligible application.” Id. (quoting Mayo, 132 S.
Ct. at 1298, 1297).
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. (brackets in original) (quoting
Mayo, 132 S. Ct. at 1294). The prohibition against patenting an abstract idea
“cannot be circumvented by attempting to limit the use of [a] formula to a
particular technological environment or adding insignificant post-solution
activity.” Bilski v. Kappos, 561 U.S. 593, 610-11 (2010) (citation and
internal quotation marks omitted). The Court in Alice noted that “‘[sjimply
appending conventional steps, specified at a high level of generality, ’ was
not ‘enough ’ [in Mayo] to supply an ‘inventive concept.’” Alice, 134 S. Ct.
at 2357 (quoting Mayo, 132 S. Ct. at 1300, 1297, 1294).
Here, Appellants contend that “the claimed system is not merely a
generic computer” because it “determines a schedule and a budget. . . based
at least on the location of the user” and thus is “necessarily rooted in
computer technology, including GPS technology . . . similar to the claims in
DDR Holdings’ ’ (App. Br. 8). However, we find that claim 1 is not like the
claims at issue in DDR Holdings.1
1 DDR Holdings, LLCv. Hotels.com, LP, 773 F.3d 1245 (Fed. Cir. 2014).
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Specifically, the claims at issue in DDR Holdings were directed to
retaining website visitors, which the court determined was a problem
“particular to the Internet.” DDR Holdings, 773 F.3d at 1257. The court
also determined that the invention was “necessarily rooted in computer
technology in order to overcome a problem specifically arising in the realm
of computer networks,” and that the claimed invention did not simply use
computers to serve a conventional business purpose. Id. Here, on the other
hand, claim 1 merely requires one or more processors operable to receive an
initial purchase, determine follow on products corresponding to the initial
purchase, determine a cost of the follow on products, determine a schedule
for purchasing follow on products based on locations detected, determine a
budget for purchasing follow on products, and storing information
representative of the budget and the schedule (see claim 1).
Thus, we find that claim 1, and similarly all claims on appeal, merely
use a generic computer or processor as a tool in the way a computer
normally functions because the claims fail to impart any discernible
improvement upon the computer or processor. Nor do Appellants’ claims
solve “a challenge particular to the Internet” as considered by the court in
DDR, 773 F.3d at 1256—57. Thus, we conclude that none of Appellants’
claims are like the claim held patent-eligible by the court in DDR.
Regarding step two of the Alice test, we find none of the recitations in
claims 1—22 add anything “significantly more” to transform the abstract
concept of selling and buying a product into a patent-eligible application.
See Alice, 134 S. Ct. at 2357.
As recognized by the Federal Circuit in Ultramercial, Inc. v. Hulu,
LLC, 772 F.3d 709, 715—16 (Fed. Cir. 2014), the “machine-or
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Application 13/796982
transformation” (MoT) test, as outlined in In re Bilski, 545 F.3d 943, 954
(Fed. Cir. 2008), can provide a “useful clue” in the second step of the Alice
framework. Under Bilski’s MoT test, a claimed process is patent-eligible
under § 101 if:
(1) it is tied to a particular machine or apparatus; or
(2) the process transforms a particular article into a different state or
thing.
Bilski, 545 F.3d at 954 (citing Gottschalk, 409 U.S. at 70).
Contrary to Appellants’ arguments (App. Br. 8), we find Appellants’
“system” (claim 1), “method” (claim 12), and “computer program product”
(claim 21) are neither sufficiently tied to a particular machine or apparatus,
nor involved in any type of transformation of any particular article.
In contrast to DDR Holdings, in which the Federal Circuit held that
claims directed to specific improvements in Internet or computer capabilities
are patent-eligible subject matter, Appellants’ claims are neither rooted in
computer technology, nor do they seek to improve any type of computer
capabilities, particularly any GPS based technology. Instead, we conclude
Appellants’ claims simply recite an abstract concept of buying, selling,
scheduling, and budgeting products, in part based on locations detected.
Our reviewing court has said that abstract ideas may include
“collecting information, including when limited to particular content.”
Electric Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir.
2016). Further, “merely presenting the results of abstract processes of
collecting and analyzing information, without more (such as identifying a
particular tool for presentation), is abstract as an ancillary part of such
collection and analysis.” Id. at 1354. Receiving and analyzing (or
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identifying data), by itself, does not transform an otherwise abstract process
or system of information collection and analysis. See id. Like the claims at
issue in Electric Power, we find Appellants’ claims 1—22 do not invoke “any
assertedly inventive programing” or an “arguably inventive set of
components or methods.” Id. Thus, the claims are merely directed to steps
of determining a schedule based on locations detected, i.e., location
information collected, and, thus, the claims recite an abstract idea.
Here, we find the mere invocations of conventional, off-the-shelf,
computer components are insufficient to pass as an inventive set of
components. As such, our review of the claims, fully considering each
claim’s elements (both individually and as an ordered combination), fails to
show that the nature of any of Appellants’ claims 1—22 is transformed into
patent-eligible subject matter.
Because we conclude each of Appellants’ claims 1—22 are directed to
a patent-ineligible abstract concept, and do not recite something
“significantly more” under the second step of the Alice analysis, we sustain
the Examiner’s rejection of these claims as being directed to non-statutory
subject matter in light of Alice and its progeny.
On the record before us, Appellants have not persuaded us the
Examiner erred in rejecting claims 1—22 under 35U.S.C. § 101 as being
directed to non-statutory subject matter.
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DECISION
We affirm the Examiner’s decision rejecting claims 1—22 under § 101.
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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