Ex Parte Zimmerman et alDownload PDFPatent Trial and Appeal BoardFeb 21, 201711964515 (P.T.A.B. Feb. 21, 2017) Copy Citation 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. 11/964,515 12/26/2007 Michael Zimmerman 0081 1955 43699 7590 Go Daddy Operating Company, LLC 14455 NORTH HAYDEN ROAD SUITE 219 SCOTTSDALE, AZ 85260 EXAMINER CAMPBELL, KELLIE L ART UNIT PAPER NUMBER 3691 NOTIFICATION DATE DELIVERY MODE 02/23/2017 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): inventions@godaddy.com pat-dept@quarles.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MICHAEL ZIMMERMAN, JUSTIN JILG, NATE CURRAN, and RYAN CORDER Appeal 2014-003525 Application H/964,5151 Technology Center 3600 Before HUBERT C. LORIN, BART A. GERSTENBLITH, and BRUCE T. WIEDER, Administrative Patent Judges. LORIN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Michael Zimmerman, et al. (the Appellants) seek our review under 35 U.S.C. § 134 of the final rejection of claims 1, 3, 4, and 6—18. We have jurisdiction under 35 U.S.C. § 6(b) (2012). 1 The Appellants identify Go Daddy Operating Company, LLC as the real party in interest. App. Br. 1. Appeal 2014-003525 Application 11/964,515 SUMMARY OF DECISION We REVERSE and enter a NEW GROUND OF REJECTION. THE INVENTION Claims 1 and 11 are the independent claims on appeal. Claim 11, reproduced below, is illustrative of the subject matter on appeal. 11. A method, comprising: A) storing in association, by one or more server computers communicatively coupled to a network, in a database communicatively coupled to said network, a domain name and a plurality of domain name performance information; B) transmitting, by said one or more server computers, to one or more financial institutions, said plurality of domain name performance information; C) receiving, by said one or more server computers, from said one or more financial institutions, one or more proposals to underwrite a sale of a plurality of shares of domain name equity in said domain name, each of said one or more proposals comprising: i) a total number of said plurality of shares of domain name equity available for sale; ii) a price per share based upon said plurality of domain name performance information; and iii) a portion of said plurality of shares of domain name equity retained by said one or more financial institutions, said portion comprising an unsold amount of said plurality of shares of domain name equity available for sale; D) transmitting, by said one or more server computers, to a client computer communicatively coupled to said network, each of said one or more proposals; 2 Appeal 2014-003525 Application 11/964,515 E) receiving, by said one or more server computers, from said client computer, a preferred proposal selected from said one or more proposals; and F) store in association, by said one or more server computers, in said database, said preferred proposal, said total number of said plurality of shares of domain name equity available for sale, said price per share and said portion of said plurality of shares of domain name equity retained by said one or more financial institutions. THE REJECTIONS The Examiner relies upon the following as evidence of unpatentability: Newman US 2003/0120578 A1 June 26,2003 Chambers US 2005/0055299 A1 Mar. 10,2005 Michlick, Frank, Inisii introduces Domain Stock Exchange in private beta, http: //www. domainnamenews. com/domainsales/fusuintroduces- domain-stock-exchange-in-private-beta/885 (Oct. 17, 2007) (hereinafter “Fusu”). The following rejections are before us for review: 1. Claims 1, 3, 4, 6—8, 10—16, and 18 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Newman and Fusu. 2. Claims 9 and 17 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Newman, Fusu, and Chambers. ISSUES Did the Examiner err in rejecting claims 1,3,4, 6—8, 10-16, and 18 under 35 U.S.C. § 103(a) as being unpatentable over Newman and Fusu, and 3 Appeal 2014-003525 Application 11/964,515 claims 9 and 17 under 35 U.S.C. § 103(a) as being unpatentable over Newman, Fusu, and Chambers? ANALYSIS The rejection of claims 1, 3, 4, 6—8, 10—16, and 18 under 35 U.S.C. § 103(a) as being unpatentable over Newman and Fusu. The independent claims are claims 1 and 11. Both call for transmitting to one or more financial institutions a plurality of domain name performance information. The Appellants argue that Newman [does not] solve[] the problem that the claimed inventions are presented to solve. Specifically, the claimed inventions clearly solve the problem of allowing a domain name registrant to transmit a plurality of domain name performance information to one or more financial institutions. The one or more financial institutions may then evaluate the domain name performance information and transmit a proposal to underwrite a sale of shares of domain name equity in the domain name to the domain name registrant. App. Br. 10. But the Examiner found that “Newman does not expressly disclose that steps A-F are specific to a new offering in the form of a domain name.” Final Act. 8. Instead, the Examiner relied on Fusu, arguing that “[it] teaches underwriting a sale of shares of equity in a domain name.” Final Act. 8 (citing para. 3, lines 3—5 through para. 4—5). However, the difficulty with Fusu is that, as the Appellants have argued, it “teaches nothing more than a platform which allows domain owners to sell ownership in a part of their domains.” App. Br. 12. Fusu discloses that “[d]omainers can list shares of their domain name and gain 4 Appeal 2014-003525 Application 11/964,515 financial benefit without losing their domain name. Investors can purchase shares in domain names and hence gain benefits from the rising value of domains. Fusu is the clearing house and earns a percentage of each domain name listing.” Fusu, p. 4. Nothing is said about domain name performance. The Examiner responded to the Appellants’ argument by arguing, inter alia, that Newman and Fusu are in the related field of endeavor of underwriting the sale of shares for an IPO and both seek to solve the problem of how IPO shares are underwritten, Newman and Fusu are analogous art to Appellant’s invention. Furthermore, Fusu does not destroy the teachings of Newman, rather Fusu is brought in to teach a specific kind of offering that can be underwritten with the use of methods and system in Newman. Ans. 5. But Fusu does not mention anything about underwriting shares. Fusu is not about underwriting shares and does not address a problem of how shares are underwritten. It is simply a clearinghouse by which domain name owners can sell shares in their domain names. Financial institutions are not disclosed as being involved and, therefore, Fusu does not disclose a capacity to underwrite domain name shares. Given nothing more than Fusu’s disclosure of a clearinghouse for shares in domain names, we do not see how one of ordinary skill would be led to modify Newman to include a step of transmitting to one or more financial institutions a plurality of domain name performance information as claimed, let alone the claim steps of storing the domain name performance information and receiving a proposal with a price per share based on said plurality of domain name performance information. 5 Appeal 2014-003525 Application 11/964,515 Accordingly, a prima facie case of obviousness has not been made out in the first instance by a preponderance of the evidence and, thus, the rejection of claims 1,3,4, 6—8, 10-16, and 18 is not sustained. The rejection of claims 9 and 17 under 35 U.S.C. § 103(a) as being unpatentable over Newman, Fusu, and Chambers. The rejection of dependent claims 9 and 17 is not sustained for the reasons discussed above. NEW GROUND OF REJECTION Claims 1, 3, 4, and 6—18 are rejected under 35 U.S.C. § 101 as being directed to judicially-excepted subject matter. 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. Taking claim 11 as representative of the claims on appeal, the claimed subject matter is directed to underwriting. Underwriting is a fundamental economic practice. As such, it is an abstract idea. 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.’” Id. (alteration in original) (quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1294 (2012)). 6 Appeal 2014-003525 Application 11/964,515 We see nothing in the subject matter claimed that transforms the abstract idea of underwriting into an inventive concept. The method of claim 11 sets out steps to perform six actions whereby (1) information about an object to be underwritten is stored; (2) said information is transmitted to an entity; (3) proposals for underwriting a sale of shares of the object from said entity are received; (4) said proposals are transmitted to a client; (5) a preferred proposal is received form the client; and (6) information about the object and the preferred proposal are stored. None of these individual steps, viewed “both individually and ‘as an ordered combination,’” transform the nature of the claim into patent-eligible subject matter. See Alice, 134 S. Ct. at 2355 (quoting Mayo, 132 S. Ct. at 1297, 1298). The storing, transmitting, and receiving actions are known operations for gathering desired information and, thus, do not patentably transform the underwriting abstract idea. Claim 11 calls for the use of “one or more server computers,” “a client computer,” and “a database . . . communicatively coupled to [a] network.” But any general-purpose computer available at the time the application was filed would have satisfied these limitations. The Specification supports that view. See Spec., para. 37. “[T]he mere recitation of a generic computer cannot transform a patent-ineligible abstract idea into a patent-eligible invention. Stating an abstract idea ‘while adding the words “apply if” is not enough for patent eligibility.” Alice, 134 S. Ct. at 2358. We further note that, according to the Appellants, “the claimed inventions clearly solve the problem of allowing a domain name registrant to 7 Appeal 2014-003525 Application 11/964,515 transmit a plurality of domain name performance information to one or more financial institutions.” App. Br. 10. The question to be asked is “whether the focus of the claims is on the specific asserted improvement in computer capabilities ... or, instead, on a process that qualifies as an ‘abstract idea’ for which computers are invoked merely as a tool.” Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335—36 (Fed. Cir. 2016). In that regard, the solution to the problem the Appellants articulate lies in the information being processed, not in any improvement in computer capabilities. For the foregoing reasons, we find that claim 11 covers subject matter that is judicially-excepted from patent eligibility under § 101. The other independent claim — system claim 1, which parallels claim 11 — similarly covers subject matter that is judicially-excepted from patent eligibility under §101. See Alice, 134 S. Ct. at 1360. The dependent claims add various types of information the underwriting scheme could process. These additional limitations do not patentably transform them from an abstract idea to an inventive application. Therefore, we enter a new ground of rejection of claims 1,3,4, and 6— 18 under 35 U.S.C. § 101. CONCLUSIONS The rejection of claims 1, 3, 4, 6—8, 10—16, and 18 under 35 U.S.C. § 103(a) as being unpatentable over Newman and Fusu is reversed. The rejection of claims 9 and 17 under 35 U.S.C. § 103(a) as being unpatentable over Newman, Fusu, and Chambers is reversed. 8 Appeal 2014-003525 Application 11/964,515 Claims 1,3,4, and 6—18 are newly rejected under 35U.S.C. § 101 as being directed to judicially-excepted subject matter. DECISION The decision of the Examiner to reject claims 1,3,4, and 6—18 is reversed. Claims 1,3,4, and 6—18 are newly rejected. NEW GROUND This decision contains a new ground 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 Appellants, 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)(l)(iv). REVERSED: 37 C.F.R, $ 41.50(b) 9 Copy with citationCopy as parenthetical citation