Ex Parte Stein

Patent Trial and Appeal Board

Sep 27, 2016

12900941 (P.T.A.B. Sep. 27, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/900,941 10/08/2010
2101 7590 09/29/2016
Sunstein Kann Murphy & Timbers LLP
125 SUMMER STREET
BOSTON, MA 02110-1618
FIRST NAMED INVENTOR
Douglas Stein
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.
3282/105 8872
EXAMINER
YESILDAG, LAURA G
ART UNIT PAPER NUMBER
2844
NOTIFICATION DATE DELIVERY MODE
09/29/2016 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):
usptomail@sunsteinlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DOUGLAS STEIN1
Appeal2015-002560
Application 12/900,941
Technology Center 2800
Before BRADLEY R. GARRIS, MARK NAGUMO, and
MONTE T. SQUIRE, Administrative Patent Judges.
GARRIS, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134 from the Examiner's
decision rejecting claims 1-11 and 23-33. We have jurisdiction under
35 U.S.C. § 6.
We AFFIRM.
Appellant claims a processor/memory-containing system and a
computer-implemented method for providing a value returned home service
1 Cross Country Home Services, Inc. is identified as the real party in interest.
App. Br. 3.
Appeal2015-002560
Application 12/900,941
contract wherein an additional value is made available to the contract holder
if the contract holder does not make a disqualifying claim within a
predetermined period of time which is less than an original term of the home
service contract determined at the time of purchase such that a remainder of
the service contract remains after the predetermined period of time
(independent claims 1 and 23).
A copy of representative claims 1 and 23, taken from the Claims
Appendix of the Appeal Brief, appears below.
1. A system for providing a value returned home service contract
compnsmg:
a processor; and
a memory storing instructions executable by the processor to perform
processes that include:
providing, to a contract purchaser, a home service contract on at least
one property owned by a contract holder, the home service contract
including warranty coverage and having an additional value, the additional
value being in addition to the warranty coverage;
checking a status of the home service contract to determine whether a
disqualifying claim has been made by the contract holder within a
predetermined period of time; and
making the additional value available to the contract holder if the
contract holder does not make a disqualifying claim within the
predetermined period of time, the predetermined period of time being less
than an original term of the home service contract determined at the time of
purchase, wherein a remainder of the service contract remains after the
predetermined period of time.
23. A computer-implemented method employing at least one
hardware implemented processor for providing a value returned home
service contract comprising:
providing, by a computer, a contract purchaser with a home service
contract on at least one property owned by a contract holder, the home
service contract including warranty coverage and having an additional value,
the additional value being in addition to the warranty coverage;
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Application 12/900,941
checking, by a computer, a status of the home service contract to
determine whether a disqualifying claim has been made by the contract
holder within a predetermined period of time; and
offering, by a computer, the contract holder an additional value if the
contract holder does not make a disqualifying claim within the
predetermined period of time, the predetermined period of time being less
than an original term of the home service contract determined at the time of
purchase, wherein a remainder of the service contract remains after the
predetermined period of time.
In the Final Action, the Examiner rejects independent claims 1 and 23
under 35 U.S.C. § 103(a) as unpatentable over CPS (Consumer Priority
Service website (from Way Back Machine, 2/10/09, 2124109 and 3/10/09,
http://web.archive.org/web/20090210044142/http://cpscentral.com/index.asp
x) in view of Marlo (Marlo Furniture website (from the Way Back Machine,
December 15, 2008,
http://web.archive.org/web/20081215094350/http://www.marlofumiture.co
m/CustomerService /ServiceAndRepairs.aspx) and Great American (Great
American Insurance Group Announces New Diminishing Deductible
Endorsement, Business Wire (2009)) (Final Action 5-14) as well as
dependent claims 2-11 and 24--33 as unpatentable over these references
alone or in combination with additional prior art (id. at 14--22).
In the Examiner's Answer, the Examiner newly rejects claims 1-11
and 23-33 under 35 U.S.C. § 101 on the ground that the claimed invention is
directed to non-statutory subject matter (Ans. 4--7).
Appellant does not present separate arguments specifically directed to
dependent claims 2-11 and 24--33 (App. Br. 8-13, Reply Br. unnumbered 1-
6). Therefore, these dependent claims will stand or fall with their parent
independent claims 1 and 23.
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Application 12/900,941
The§ 103 Rejections
The Examiner concludes that it would have been obvious to modify
CPS such that additional value is made available to the contract holder if the
contract holder does not make a disqualifying claim within a predetermined
period of time in view of Marlo (Final Action 8). The Examiner finds that
the combination of CPS and Marlo does not disclose the predetermined
period of time being less than an original term of the contract determined at
the time of purchase (id. at 9) but concludes that, in view of Great American,
it would have been obvious to provide modified CPS with a predetermined
period of time which is less than the original contract term (id. at 10, 13-14).
Appellant does not contest with any reasonable specificity the
Examiner's proposed combination of CPS and Marlo (App. Br. 9-10).
Rather, Appellant challenges the Examiner's obviousness conclusion
involving Great American by arguing "[ n ]owhere does Great American
teach or suggest a predetermined period of time that is less than an original
term of a home service contract" (App. Br. 10) and "Great American's
predetermined period of time is, at best, equal to the term of the contract"
(id.).
We agree with Appellant that the predetermined period of time
expressly disclosed in Great American is equal to the original term of the
contract determined at the time of purchase. However, the Examiner
explicitly determines that, based on the teachings of Great American, "the
predetermined period being less than the original period of the contract is
merely a design choice driven by consumer incentives" (Final Action 10)
and that it would have been an obvious matter of design choice to select a
predetermined period which is less than the original term of the contract
(id.). In response to Appellant's above argument, the Examiner reiterates
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Application 12/900,941
this design choice determination and obviousness conclusion in the Answer
(Ans. 13). Significantly, in both the Appeal Brief and the Reply Brief,
Appellant fails to address, and therefore fails to show error in, the
Examiner's obviousness conclusion based on design choice.
Under these circumstances, we sustain the Examiner's § 103
rejections of claims 1-11 and 23-33.
The§ 101 Rejection
The Examiner determines that Appellant's claims to a system and
method for providing a value returned home service contract are drawn to an
abstract idea involving fundamental economic/business practices and certain
methods of organizing human activities (Ans. 4--5). The Examiner further
determines that the claims do not recite additional elements sufficient to
transform the claimed abstract idea into patent-eligible subject matter
"because the claims do not recite 'an improvement to another technology or
technical field, an improvement to the functioning of the computer itself, or
meaningful limitations beyond generally linking the use of an abstract idea
to a particular technological environment"' (id. at 5---6 (citing Alice Corp.
Pty. Ltd. v. CLS Banklnt'l, 134 S. Ct. 2347 (2014))). In particular, the
Examiner states that the recitation involving a computer does not transform
the abstract idea of Appellant's claims into a patent-eligible invention (id. at
6 (citing and quoting from Alice Corp. v. CLS Bank, 134 S. Ct. at 2358).
For the reasons given in the Answer and below, the Examiner's§ 101
rejection has merit, and Appellant fails to show harmful error in the
rejection.
Pre-emption is the concern that drives exclusion of abstract ideas from
the§ 101 subject matter eligible for patent protection. Alice v. CLS, 134 S.
Ct. at 2354. A patent on an abstract idea would pre-empt use of the abstract
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idea in all fields and would effectively grant a monopoly over such an idea.
Id. We apply a two part framework for assessing whether Appellant's claim
subject matter is patent-ineligible. Id. First, we determine whether the
claims are directed to an abstract idea. Id. Second, we consider whether the
additional elements of the claims transform the nature of the claims into
patent-eligible subject matter. Id.
Appellant argues that "the subject matter claimed here, unlike the
claims in Alice and Bilski [i.e., Bilski v. Kappas, 561 U.S. 593 (2010)] is not
a method of conducting business [but] [i]nstead, ... concerns
technologically-based subject matter for providing a contract holder with an
additional value" (Reply Br. unnumbered 4).
Appellant's argument is not persuasive. The Examiner convincingly
determines that claims 1 and 23 are directed to a system and method for
providing a value returned home service contract involving a fundamental
economic and business practice (i.e., providing a home service contract) as
well as a method of orgamzmg human activities (i.e., incentivizing a
contract holder to not file a claim). Appellant does not identify with
reasonable specificity any error in the Examiner's determination.
Furthermore, Appellant does not explicatively embellish why claims 1 and
23 are considered distinguishable in terms of patent-eligibility from the
claims of Alice and Bilski. These latter claims, like appealed claims 1 and
23, were determined by the Court to be drawn to concepts involving a
fundamental economic practice and a method of organizing human activity.
Alice, 134 S. Ct. at 2356-57.
For these reasons, Appellant does not persuade us that the Examiner
erred in determining the appealed claims are directed to an abstract idea.
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Appellant also argues that "the claimed invention is directed to a new
technological platform" (Reply Br. unnumbered 5) and "the architecture of
the technological system described herein is novel and is therefore
transformative of the underlying components of the system" (id.).
The technological platform recited in claims 1 and 23 is a computer
(i.e., a processor and memory). As thoroughly detailed by the Examiner, the
Court has held that "the mere recitation of a generic computer cannot
transform a patent-ineligible abstract idea into a patent-eligible invention"
(Alice, 134 S. Ct. at 2358) regardless of whether the claims are directed to a
method (id. at 2359---60) or a system (id. at 2360). Appellant does not
explain why the "technological platform" recited in claims 1 and 23 is
considered to be "transformative" (Reply Br. unnumbered 5). More
specifically, Appellant provides no reasoning for the statement that "the
architecture of the technological system described herein is novel and is
therefore transformative" (id.).
Accordingly, we determine that Appellant fails to identify any
additional elements in the appealed claims that transform the abstract idea
thereof into patent-eligible subject matter. As a consequence, Appellant's
claims would pre-empt use of this idea in the recited field of providing a
value returned home service contract. The claim recitation that the
predetermined period of time is less than the original term of the contract
may narrow the scope of the pre-emption but does not negate it. See, e.g.,
Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 716 (Fed. Cir. 2014)
("Narrowing the abstract idea of using advertising as a currency to the
Internet is an 'attempt[] to limit the use' of the abstract idea 'to a particular
technological environment,' which is insufficient to save a claim." (internal
citations to Alice and Bilski removed)).
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We sustain the§ 101 rejection of claims 1-11 and23-33.
Conclusion
The decision of the Examiner is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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