Ex Parte Yuan et al

Patent Trial and Appeal Board

May 26, 2017

13838626 (P.T.A.B. May. 26, 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.
13/838,626 03/15/2013 Mark D. Yuan 2043.C06US1 4656
49845 7590 05/31/2017
SCHWEGMAN LUNDBERG & WOESSNER/EBAY
P.O. BOX 2938
MINNEAPOLIS, MN 55402
EXAMINER
HO, BINH VAN
ART UNIT PAPER NUMBER
2152
NOTIFICATION DATE DELIVERY MODE
05/31/2017 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):
USPTO@SLWIP.COM
SLW @blackhillsip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARK D. YUAN and
NEELAKANTAN SUNDARESAN
Appeal 2017-003394
Application 13/83 8,6261
Technology Center 2100
Before DEBRA K. STEPHENS, DANIEL J. GALLIGAN, and
JESSICA C. KAISER, Administrative Patent Judges.
STEPHENS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134 from a Final Rejection of
claims 1—20. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE and enter NEW GROUNDS OF REJECTION under
37 C.F.R. § 41.50(b).
1 According to Appellants, the real party in interest is eBay Inc. (App. Br.
2).
Appeal 2017-003394
Application 13/838,626
CLAIMED SUBJECT MATTER
According to Appellants, the claims are directed to certifying an item
based on received evidence (Abstract). Claim 1, reproduced below, is
representative of the claimed subject matter:
1. A method comprising:
determining a requirement for a level of certification for
an attribute of an item;
providing a notification of an evidence item that is to be
submitted to evaluate the level of certification for the attribute of
the item;
receiving the evidence item; and
determining whether the requirement for the level of
certification for the attribute of the item is satisfied based on the
received evidence item.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Chess US 6,026,374 Feb. 15,2000
Ahmed US 2007/0214259 A1 Sept. 13, 2007
Stoll US 2013/0317941 A1 Nov. 28, 2013
REJECTIONS
Claims 1, 3, 8, 10, 15, and 17 stand rejected under 35 U.S.C. § 102(b)
as being anticipated by Chess (Final Act. 2—7).
Claims 2, 4—6, 9, 11—13, 16, and 18—20 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Chess and Ahmed {id. at 7—13).
Claims 7 and 14 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Chess and Stoll {id. at 13—15).
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ISSUE
35 U.S.C. § 102(b): Independent Claims 1, 8, and 15
Appellants contend their invention as recited in claims 1, 8, and 15, is
not anticipated by Chess (App. Br. 11—13; Reply Br. 1^4). The issue
presented by the arguments is:
Issue: Has the Examiner erred in finding Chess discloses
“determining a requirement for a level of certification . . . and determining
whether the requirement for the level of certification for the attribute of the
item is satisfied,” as recited in claim 1?
ANALYSIS
Appellants contend Chess does not disclose “determining a
requirement for a level of certification . . . and determining whether the
requirement for the level of certification for the attribute of the item is
satisfied,” as recited in claim 1 and similarly recited in claims 8 and 15
(App. Br. 11—13; Reply Br. 1^4). Specifically, Appellants argue Chess
“ha[s] a product evaluated by a summarizer” but does not disclose “a
requirement for the level of certification” (App. Br. 12; Reply Br. 2—3).
We are persuaded by Appellants’ argument. The Examiner finds
Chess “determin[es] a requirement for a level of certification” (Final Act. 2;
Ans. 4) by “provid[ing] the buyer with the option to make use of a
summarizer service” to evaluate a product (Chess 2:46—63). The Examiner
further finds Chess “determin[es] whether the requirement... is satisfied”
(Final Act. 3,17; Ans. 6) when “the buyer then decides which [product] to
actually purchase” (Chess 3:38-40).
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However, in the Examiner’s application of Chess, the buyer’s decision
to purchase a product, i.e., “determining whether the requirement for the
level of certification for the attribute of the item is satisfied,” is not based on
the option to use a summarizer service, i.e., “determining a requirement for a
level of certification.” That is, the claim requires that the certification
requirement first determined is the same certification requirement that is
later satisfied, but the Examiner relies on different elements of Chess to
disclose the same certification requirement recited in the claim. Thus, the
Examiner has not adequately identified where or explained how Chess sets a
certification requirement and how that certification requirement is satisfied.
As a result, the Examiner has not set forth with specificity Chess’s
disclosure that teaches “determining a requirement for a level of
certification . . . and determining whether the requirement for the level of
certification for the attribute of the item is satisfied,” as recited in claim 1.
Accordingly, based on the Examiner’s determination that Chess
determines a requirement by providing the option of a summarizer service
and satisfies that requirement when the user purchases a product (Final Act.
2—3, 16—17; Ans. 4—6), we are constrained to reverse the Examiner’s
rejection under 35 U.S.C. § 102 of independent claims 1, 8, and 15. It
follows, Appellants have shown the Examiner erred in finding Chess
anticipates independent claims 1, 8, and 15 and dependent claims 3, 10, and
17, which depend from claims 1, 8, and 15.
Additionally, Appellants have persuaded us the Examiner has not
shown Ahmed or Stoll cure the deficiencies of Chess. Accordingly,
dependent claims 2, 4—7, 9, 11—14, 16, and 18—20 stand with their respective
independent claims. Because we do not sustain the Examiner’s § 102
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rejection of independent claims 1, 8, and 15, we do not reach the merits of
Appellants’ remaining arguments for claims 2, 4—7, 9, 11—14, 16, and 18—20
(see App. Br. 13—16; see also Reply Br. 4—7). Thus, we do not sustain the
Examiner’s § 103 rejections of claims 2, 4—7, 9, 11—14, 16, and 18—20.
REJECTIONS OF CLAIMS 1-20 UNDER 37 C.F.R. § 41.50(b)
We make the following new grounds of rejection using our authority
under 37 C.F.R. § 41.50(b).
Claims 1—20 are rejected under 35 U.S.C. § 101 as being directed to
non-statutory subject matter.
Claims 1, 8, and 15 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Chess.
ANALYSIS
35 U.S.C. § 101: Claims 1-20
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.
CLSBankInt7, 134 S. Ct. 2347, 2354 (2014).
In Alice, the Supreme Court reaffirmed the framework set forth
previously in Mayo Collaborative Services v. Prometheus Laboratories,
Inc., 566 U.S. 66 (2012), “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
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step in the analysis is to “determine whether the claims at issue are directed
to one of those patent-ineligible concepts.” Id. If so, the second step is to
consider the elements of the claims “individually and ‘as an ordered
combination’ to determine whether the additional elements ‘transform the
nature of the claim’ into a patent-eligible application.” Id. (quoting Mayo,
566 U.S. at 79, 78). 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, 566 U.S. at 72—73).
Applying the first step of the analysis, we find that independent
claim 1 is directed to a process of reviewing evidence that an item meets a
standard. Specifically, claim 1 recites “determining a requirement for a level
of certification for an attribute of an item,” i.e., setting the required standard.
Claim 1 then recites “providing a notification of an evidence item that is to
be submitted to evaluate the level of certification for the attribute of the
item” and “receiving the evidence item,” i.e., requesting and receiving
evidence that the item meets that standard. Claim 1 then “determin[es]
whether the requirement for the level of certification for the attribute of the
item is satisfied based on the received evidence item,” i.e., reviews the
evidence to ensure the item meets the standard. We conclude claim 1 is
directed to a patent-ineligible concept, i.e., reviewing evidence that an item
meets a standard. Indeed, reviewing attestations, i.e., evidence, of an item’s
quality is a long-known, fundamental economic practice. For example,
diamonds are graded by various certifying entities such as the Gemological
Institute of America (GIA) and the International Gemological Institute (IGI);
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a diamond purchaser who prefers highly-graded GIA certified diamonds is
able to review the diamond’s GIA certification to ensure the diamond is a
highly-graded GIA certified diamond. Appellants’ claim 1 is directed to just
such an abstract concept.
Further, under the second step of the analysis, we find that the
elements of the claims, individually and as an ordered combination, do not
constitute an inventive concept that is sufficient to ensure that the claim
amounts to significantly more than the patent-ineligible concept. Claim 1 is
written in abstract terms, without limitation as to what performs the claimed
method. Indeed, claim 1 recites the general steps of how an item is certified
but does not provide specific details directed to how those steps are
performed. Thus, we conclude the elements of claim 1 recite conventional
steps at a high level of generality and as a result, do not recite an “inventive
concept.” See Alice, 134 S. Ct. at 2357 (“Simply appending conventional
steps, specified at a high level of generality, [is] not enough to supply an
inventive concept.” (citation and internal quotation marks omitted)).
Independent claims 8 and 15 recite similar limitations to claim 1, and
under the first step of the § 101 analysis, we conclude they are directed to
the same patent-ineligible concept. Claims 8 and 15 also recite additional
limitations not present in claim 1. Specifically, claim 8 recites a memory
and one or more processors implementing the claimed invention, and claim
15 recites a non-transitory machine readable medium embodying
instructions executed by a processor implementing the claimed invention.
As with claim 1, we conclude the limitations of claims 8 and 15, either
individually or as an ordered combination, do not recite significantly more
than the abstract concept. Instead, the additional limitations are recitations
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of generic computer implementations and do not render these claims patent-
eligible. Alice, 134 S. Ct. at 2358 (“[T]he mere recitation of a generic
computer cannot transform a patent-ineligible abstract idea into a patent-
eligible invention.”).
We also reject dependent claims 2—7, 9—14, and 16—20 under 35
U.S.C. § 101 as directed to patent-ineligible concepts. The dependent claims
recite limitations directed to the evidence required to certify an item (claims
2, 9, and 16), how certified items are viewed (claims 3, 7, 10, 14, and 17), or
the requirements for a certification level (claims 4—6, 11—13, and 18—20).
We determine these limitations do not transform these claims into patent-
eligible subject matter.
We therefore reject claims 1—20 under 35 U.S.C. § 101 as directed to
patent-ineligible subject matter.
35 U.S.C. § 103: Claims 1, 8, and 15
While we have found supra, that Chess does not anticipate claims 1,
8, and 15, we nevertheless find that Chess would have at least suggested the
claimed invention to one of ordinary skill in the art. Specifically, we find
Chess teaches a “buyer may provide to the summarizer a set of keywords
representing the information he hopes will be found in the information
products” (Chess 2:61—63), i.e., “providing a notification of an evidence
item that is to be submitted to evaluate . . . the attribute of the item” and
“receiving the evidence item.” Further, we find Chess teaches “the
summarizer computes a score for each information product, reflecting how
likely it is to contain the information the buyer is looking for” and the buyer,
“[ajfter reviewing the scores of the information products[,] . . . decides
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which [product] to actually purchase” (Chess 3:19—21, 38-40), i.e., the
buyer “determin[es] whether the requirement for the level of certification for
the attribute of the item is satisfied based on the received evidence item.” In
particular, Chess’ buyer determines whether the summarizer’s product score
satisfies the buyer’s purchasing standard, i.e., satisfies a “requirement for the
level of certification.”
Chess does not expressly teach that the “requirement for the level of
certification” is determined. However, as discussed supra, Chess teaches
that a buyer’s purchase decision is based on the summarizer’s product score,
i.e., the satisfaction of a level of certification (Chess 3:38-40). As such, we
determine it would have been obvious to an ordinary skilled artisan that a
buyer, who chooses to purchase a product based on a product score, would
have decided what product score would be acceptable before purchasing the
product, i.e., the buyer “determin[es] a requirement for a level of
certification.”
Accordingly, we conclude Chess renders obvious the limitations
recited in independent claim 1. With respect to independent claims 8 and
15, we adopt the Examiner findings as to the generic computer
implementations recited.
Although we have rejected independent claims 1,8, and 15 under 37
C.F.R. § 41.50(b), we have not reviewed the remaining claims, i.e.,
dependent claims 2—7, 9-14, and 16—20, to the extent necessary to determine
whether these claims are patentable under 35 U.S.C. § 103(a). We leave it to
the Examiner to determine the appropriateness of any further rejections
based thereon.
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DECISION
The Examiner’s rejection of claims 1,3,8, 10, 15, and 17 under 35
U.S.C. § 102(b) as being anticipated by Chess is reversed.
The Examiner’s rejection of claims 2, 4—6, 9, 11—13, 16, and 18—20
under 35 U.S.C. § 103(a) as being unpatentable over Chess and Ahmed is
reversed.
The Examiner’s rejection of claims 7 and 14 under 35 U.S.C. § 103(a)
as being unpatentable over Chess and Stoll is reversed.
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that the appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the examiner, in
which event the proceeding will be remanded to the examiner. . . .
(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same record. . . .
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l)(iv).
REVERSED: 37 C.F.R, $ 41.50(b)
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