Ex Parte Walker et al

Patent Trial and Appeal Board

Jul 18, 2017

11410342 (P.T.A.B. Jul. 18, 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.
11/410,342 04/24/2006 Jay S. Walker 058407/426783 3808
826 7590
ALSTON & BIRD LLP
BANK OF AMERICA PLAZA
101 SOUTH TRYON STREET, SUITE 4000
CHARLOTTE, NC 28280-4000
EXAMINER
HAQ, NAEEM U
ART UNIT PAPER NUMBER
3625
NOTIFICATION DATE DELIVERY MODE
07/20/2017 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):
u sptomail @ alston .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAY S. WALKER, JAMES A. JORASCH,
and ANDREW S. VAN LUCHENE
Appeal 2016-0042361
Application 11/410,3422
Technology Center 3600
Before ANTON W. FETTING, CYNTHIA L. MURPHY, and
MATTHEW S. MEYERS, Administrative Patent Judges.
MEYERS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 115—146. We have jurisdiction under 35 U.S.C. § 6(b).
An Oral Hearing was held July 11, 2017.
We AFFIRM.
1 Our decision references Appellants’ Appeal Brief (“Appeal Br.,” filed
August 6, 2015) and Reply Brief (“Reply Br.,” filed March 10, 2016), the
Examiner’s Answer (“Ans.,” mailed January 11, 2016), and Final Office
Action (“Final Act.,” mailed March 6, 2015).
2 Appellants identify Groupon, Inc., as the real party in interest (Appeal Br.
2).
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CLAIMED INVENTION
Appellants’ claims relate “to a system and method that enables the
establishment of prices for products via a network and the subsequent
acquisition of such products from local retailers that honor the established
prices” (Spec. 1,11. 6—8).
Claims 115, 116, and 140 are the independent claims on appeal.
Claim 115 reproduced below, with minor formatting changes and added
bracketed notations, is illustrative of the subject matter on appeal:
115. An apparatus, comprising:
[a] a processor; and
[b] a memory operatively connected to the processor, the
memory storing instructions that when executed by the processor
cause the apparatus to:
[c] receive, from a handheld device operated by a buyer, a
request to purchase a product at a first price established by the
manufacturer of the product;
[d] identify a store locations list including store locations
in the geographic area of the buyer that have the product in stock;
[e] select a store location from the store locations list,
wherein the selected store location offers the product for a second
price different than the first price;
[f] transmit, to the handheld device operated by the buyer,
information that enables the buyer to physically acquire the
product at the store location in exchange for providing payment
of the first price.
REJECTION
Claims 115—146 are rejected under 35U.S.C. § 101 as directed to
non-statutory subject matter.
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ANALYSIS
Non-statutory subject matter
Appellants argue claims 115—146 as a group (see Appeal Br. 6—16).
We select claim 115 as representative. Claims 116—146 stand or fall with
independent claim 115. See 37 C.F.R. § 41.37(c)(l)(iv).
Alice Corp. Pty. Ltd. v. CLS Bank Inti, 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.
The “directed to” inquiry [] cannot simply ask whether the claims
involve a patent-ineligible concept, because essentially every
routinely patent-eligible claim involving physical products and
actions involves a law of nature and/or natural phenomenon—
after all, they take place in the physical world. See Mayo, 132 S.
Ct. at 1293 (“For all inventions at some level embody, use,
reflect, rest upon, or apply laws of nature, natural phenomena, or
abstract ideas.”) Rather, the “directed to” inquiry applies a stage-
one filter to claims, considered in light of the specification, based
on whether “their character as a whole is directed to excluded
subject matter.” Internet Patents Corp. v. Active Network, Inc.,
790 F.3d 1343, 1346 (Fed. Cir. 2015); see Genetic Techs. Ltd. v.
MerialL.L.C., 818 F.3d 1369, 1375 [] (Fed. Cir. 2016) (inquiring
into “the focus of the claimed advance over the prior art”).
Enfish, LLCv. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016). “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 Texas, LLC
v. DIRECTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016) (citing Elec. Power
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Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016); see also
Enfish, 822 F.3d at 1335.
In rejecting claims 115—146, the Examiner finds the claims “are
directed to purchasing a product, which is an abstract idea because
purchasing a product is a fundamental economic practice” (Final Act. 2; see
also Ans. 2). The Examiner also finds
the claim elements, considered separately and as an ordered
combination, do not provide an improvement to another
technology or technical field; do not provide an improvement to
the functioning of the computer itself; do not apply the judicial
exception by use of a particular machine; do not effect a
transformation or reduce a particular article to a different state or
thing; and do not add a specific limitation other than what is well-
understood, routine and conventional in the operation of generic
computer.
(Final Act. 4—5; see also Ans. 2—4).
Appellants argue that the Examiner errs in rejecting claims 115—146
as directed to ineligible subject matter because exemplary independent
“claim 115 is not ‘directed to’ ‘purchasing a product’ or ‘purchasing a
product in exchange for payment,’ because those features are not ‘recited
(i.e., set forth or described)’ in the claim itself’ (Reply Br. 5—6; see also
Appeal Br. 6—7). Appellants further argue that the Examiner’s rejection is
improper “[bjecause no evidence has been presented for many of the
underlying factual findings underlying the conclusion of ineligibility”
(Reply Br. 3—4, 9—10; see also Appeal Br. 14). Appellants’ arguments are
not persuasive.
By way of background, the Examiner finds the claims are “directed to
purchasing a product, which is an abstract idea because it is similar to the
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fundamental economic practice at issue in Bilski and Alice Corp. (Ans. 2).
In making this determination, the Examiner observes that
[independent claim] 115 explicitly recites “ . . . a request to
purchase a product at a first price . . . “ and “ . . . acquire the
product at the store location in exchange for providing payment
of the first price.” The examiner interprets these limitations to
mean purchasing a product in exchange for a payment, which is
an abstract idea because it is a fundamental economic practice.
{Id. at 4). And, after considering what the claims are directed to, the
Examiner finds independent claim 115 “recites the additional limitations of a
processor, memory, and a handheld device” {id. at 2), i.e., “generic computer
components that are claimed to perform their basic functions of processing,
storing, receiving, transmitting, and displaying data through a program that
implements the abstract idea” {id. at 3). Thus, we determine initially the
Examiner has adequately articulated what abstract idea the claims are
directed to. We acknowledge that the claims are not as broad as the abstract
idea articulated by the Examiner, but this does not alter the result.3 In fact,
as discussed below, the Specification underscores the breadth and abstract
nature of the idea embodied by the claims.
To the extent Appellants argue that the Examiner erred in adequately
supporting or explaining this determination by providing evidence {see
Reply Br. 10-11), we are unpersuaded. In this regard, there is no
requirement that examiners must provide evidentiary support in every case
before a conclusion can be made that a claim is directed to an abstract idea.
See, e.g., para. IV “July 2015 Update: Subject Matter Eligibility” to 2014
3 We also note that “an abstract idea can generally be described at different
levels of abstraction.” Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240
(Fed. Cir. 2016).
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Interim Guidance on Subject Matter Eligibility (2014 IEG), 79 Fed. Reg.
74618 (Dec. 16, 2014)
The courts consider the determination of whether a claim is
eligible (which involves identifying whether an exception such
as an abstract idea is being claimed) to be a question of law.
Accordingly, courts do not rely on evidence that a claimed
concept is a judicial exception, and in most cases resolve the
ultimate legal conclusion on eligibility without making any
factual findings.
{Id. (emphasis added)). We agree that evidence may be helpful in certain
situations where, for instance, facts are in dispute. But it is not always
necessary. Based on the above analysis set forth by the Examiner, we are
unpersuaded it is necessary in this case.
Instead, we need only look to other decisions where similar concepts
were previously found abstract by the courts. See Amdocs (Israel) Limited v.
Openet Telecom, Inc., 841 F.3d 1288, 1294 (Fed. Cir. 2016) (“Instead of a
definition [for what an ‘abstract idea’ encompasses], then, 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.”)
To that end, as noted above, the Examiner finds exemplary
independent claim 115 recites “generic computer components” (Ans. 3) to
perform the “basic functions of processing, storing, receiving, transmitting,
and displaying data through a program that implements the abstract idea”
{id.). Broadly, we agree that the Examiner is correct.
Here, independent claim 115 recites “[a]n apparatus” including “a
processor” and “memory storing instructions that when executed by the
processor cause the apparatus to: receive ... a request to purchase a
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product,” “identify . . . store locations . . . that have the product in stock,”
“select a store location . . . [that] offers the product,” and
“transmit. . . information that enables the buyer to physically acquire the
product.” And, according to the Specification,
the present invention provides a system and a process whereby
a customer can examine merchandise information posted on a
web site, receive a list of stores which have either the
customer’s desired product in stock or that typically stock the
product, and pick up that product at a designated local store
(Spec. 7,11. 16-19).
In this regard, we find that the claims are more precisely directed to
enabling the purchase of a product at a particular price established by a
manufacturer, although we do not discern that any gap between this finding
and that of the Examiner is of any substantive significance. Furthermore, we
are persuaded that either articulation of what the claims are “directed to” is a
fundamental economic practice, in that it is analogous to the concept of
intermediated settlement in Alice, and the concept of risk hedging in Bilski v.
Kappos, 561 U.S. 593 (2010), and, thus, is an abstract idea beyond the scope
of § 101. See Alice Corp., 134 S. Ct. at 2356; Bilski, 561 U.S. at 611.
We also note the claim instructions for “receiving],” “identify[ing],”
“selecting],” and “transmitting]” information is similar to the steps that the
Federal Circuit determined were patent ineligible in Electric Power. In
Electric Power, the method claims at issue were directed to performing real­
time performance monitoring of an electric power grid by collecting data
from multiple data sources, analyzing the data, and displaying the results.
Elec. Power Grp., LLC, 830 F.3d at 1351—52. The Federal Circuit held that
the claims were directed to an abstract idea, explaining that “[t]he advance
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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.” Id. at
1354.
Accordingly, we find that independent claim 115 involves nothing
more than “receiv[ing],” “identify[ing],” “select[ing],” and “transmitting]”
information — activities squarely within the realm of abstract ideas. See,
e.g., Elec. Power Grp., LLC, 830 F.3d at 1353—54 (when “the focus of the
asserted claims” is “on collecting information, analyzing it, and displaying
certain results of the collection and analysis,” the claims are directed to an
abstract idea). See also Accenture Global Servs., GmbHv. Guidewire
Software, Inc., 728 F.3d 1336, 1344^45 (Fed. Cir. 2013) (claims reciting
“generalized software components arranged to implement an abstract
concept [of generating insurance-policy-related tasks based on rules to be
completed upon the occurrence of an event] on a computer” not patent
eligible).
Step two is “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 (alteration in original) (citing
Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1294
(2012)).
And, similar to the situation in Electric Power, we find nothing
sufficient to remove the claims from the class of subject matter ineligible for
patenting. As the court explained in Electric Power, “merely selecting
information, by content or source, for collection, analysis, and display does
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nothing significant to differentiate a process from ordinary mental processes,
whose implicit exclusion from § 101 undergirds the information-based
category of abstract ideas.” Elec. Power Grp., 830 F.3d at 1355.
Here, as the Examiner points out, independent claim 115 utilizes
“generic computer components that are claimed to perform their basic
functions of processing, storing, receiving, transmitting, and displaying data
through a program that implements the abstract idea” (Ans. 3), “and do[es]
not add a specific limitation other than what is well-understood, routine and
conventional in the operation of generic computer” (see Final Act. 5). Thus,
the steps recited by independent claim 115 amount to nothing more than
mere instructions to implement the abstract idea on a computer—none of
which add inventiveness because they merely require the application of
conventional, well-known analytical steps. See Ultramercial, Inc. v. Hulu,
LLC, 772 F.3d 709, 716 (Fed. Cir. 2014) (“[T]he claimed sequence of steps
comprises only ‘conventional steps, specified at a high level of generality,’
which is insufficient to supply an ‘inventive concept.’”) (Citing Alice, 134 S.
Ct. at 2357) (internal citations omitted).
Here, Appellants argue that independent claim 115 recites
“‘identifying a store locations list including stores in the geographic area of
the buyer that have the product in stock,’ ‘selecting a store location from the
store locations list,’ and ‘transmitting . . . information that enables the buyer
to physically acquire the product at the store location’” (Reply Br. 2), and as
such, “it is impossible to arrive at a supportable conclusion that the claims
do not recite ‘significantly more’ than ‘purchasing a product’” {id. at 3).
However, there is no indication in the record that any specialized computer
hardware or other “inventive” computer components are required to perform
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these any of these steps in the claim. In fact, the Specification discloses that
“[t]he component parts forming system 100 will be readily understood by
those skilled in the art of credit card processing and computer data
processing systems. Accordingly, for purposes of brevity, detailed
discussions of such component parts are omitted” (Spec. 13,11. 21—23).
Thus, each limitation does no more than require a generic computer to
perform generic computer functions.
And, considered as an ordered combination, the computer components
of Appellants’ independent claim 115 add nothing that is not already present
when the limitations are considered separately. Viewed as a whole,
Appellants’ claims simply recite the concept of enabling the purchase of a
product at a particular price established by a manufacturer using instructions
executed by a processor (see Appeal Br. 17 (Claims App’x.)).
The claims do not, for example, purport to improve the functioning of
the computer itself or involve a solution necessarily rooted in computer
technology to overcome a problem specific to the realm of computer
networks, but instead embodies the use of generic computer components in a
conventional manner to perform an abstract idea, which, as the Court in
DDR Holdings explained, is not patent eligible. DDR Holdings, LLC v.
Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014) (“[TJhese claims in
substance were directed to nothing more than the performance of an abstract
business practice on the Internet or using a conventional computer. Such
claims are not patent-eligible.”). Nor do the claims effect an improvement
in any other technology or technical field. Instead, the claims at issue
amount to nothing significantly more than an instruction to apply the
abstract idea of enabling the purchase of a product, i.e., receiving,
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identifying, selecting, and transmitting information, which under our
precedents, is not enough to transform an abstract idea into a patent-eligible
invention. See Alice, 134 S. Ct. at 2360.
Appellants “the independent claims recite only a narrow subset of all
possible scenarios involving ‘purchasing a product,’ and thus cannot
reasonably be interpreted as disproportionally tying up the use of the concept
of ‘purchasing a product’” (Appeal Br. 10). However, Appellants’
preemption argument does not alter our § 101 analysis. Preemption
concerns are fully addressed and made moot where a patent’s claims are
deemed to disclose patent ineligible subject matter under the two-part
framework described in Mayo and Alice. Ariosa Diagnostics, Inc. v.
Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015). “While preemption
may signal patent ineligible matter, the absence of complete preemption
does not demonstrate patent eligibility.” Id.
To the extent Appellants argue that the Examiner erred in relying on
Ariosa v. Sequenom to address Appellants’ arguments “regarding whether
the claims preempt a judicial exception” (Reply Br. 6 (citing Ans. 5)), we
are unpersuaded. The difficulty with this argument is that it confuses the
pre-emption concern with the level of abstraction describing the abstract
idea. Here, with respect to the pre-emption concern, “[wjhat matters is
whether a claim threatens to subsume the full scope of a fundamental
concept, and when those concerns arise, we must look for meaningful
limitations that prevent the claim as a whole from covering the concept’s
every practical application.” CLSBanklnt’l. v. Alice Corp. Pty. Ltd., Ill
F.3d 1269, 1281 (Fed. Cir. 2013) (Lourie, J., concurring).
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Appellants last argue that the Examiner “agrees that the claimed
features, in combination, cannot be found in the prior art” (Appeal Br. 11),
and as such, “the claims recite an ‘inventive concept’ necessary to satisfy
Step 2” (id.; see also id. at 15—16). However, to the extent Appellants argue
that the claims necessarily contain an “inventive concept” based on their
alleged novelty and non-obviousness over the cited references, Appellants
misapprehend the controlling precedent. That is, although the second step in
the Alice/Mayo framework is termed a search for an “inventive concept,” the
analysis is not an evaluation of novelty or non-obviousness, but rather, a
search for “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. A novel and
nonobvious claim directed to a purely abstract idea is, nonetheless, patent-
ineligible. See Mayo, 132 S. Ct. at 1304.
The remaining arguments have been considered but found
unpersuasive.
In view of the foregoing, we sustain the Examiner’s rejection under
35 U.S.C. § 101 of independent claim 115, and claims 116—146, which fall
with independent claim 1.
DECISION
The Examiner’s rejection of claims 115—146 under 35 U.S.C. § 101 is
affirmed.
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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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