Ex Parte Zuida et al

Patent Trial and Appeal Board

May 31, 2017

12812510 (P.T.A.B. May. 31, 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.
12/812,510 02/16/2011 Valerie Zuida PT1133USPC 8165
132326 7590
Thompson Hine LLP
10050 Innovation Drive
Suite 400
Dayton, OH 45342-4934
06/02/2017 EXAMINER
HARRINGTON, MICHAEL P
ART UNIT PAPER NUMBER
3628
NOTIFICATION DATE DELIVERY MODE
06/02/2017 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):
ipdocket @ thompsonhine. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte VALERIE ZUIDA, FINTAN FORDE,
YVAN LABRIT, and
WILLIAM WARBINGTON
Appeal 2016-005163
Application 12/812,510
Technology Center 3600
Before: JOSEPH L. DIXON, ERIC S. FRAHM, and
MATTHEW J. McNEILL, Administrative Patent Judges.
DIXON, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2016-005163
Application 12/812,510
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims
1—3, 5, 11, 12, 14—21, 23, 24, and 28—33. We have jurisdiction under 35
U.S.C. § 6(b).
We affirm.
The claims are directed to a multi-travel aggregator. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. An aggregation method comprising:
receiving a travel request including travel search criteria comprising
an itinerary with a geographic requirement;
accessing a plurality of basket rules in a rules database with a rules
engine, each basket rule grouping baskets for a market designated by a pair
of geographic criteria;
determining a single basket rule from among the basket rules for
which the pair of geographic criteria of the market matches the geographic
requirement of the itinerary of the travel search criteria;
identifying, by a basket rule processor and based upon the single
basket rule, one or more baskets each including a plurality of provider types
and a plurality of characteristics to be used to retrieve travel solutions;
selecting, from each basket, one or more travel sources from which the
travel solutions can be retrieved that satisfy one or more of the provider
types and one or more of the characteristics, and that have a market
designation that satisfies the pair of geographic criteria of the market;
forwarding the travel request to the one or more travel sources;
receiving one or more travel solutions from each travel source; and
aggregating, by an aggregator, the one or more travel solutions
provided by each travel source.
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REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Lynch etal. US 5,839,114 Nov. 17, 1998
Chen et al. US 2002/0152100 A1 Oct. 17, 2002
REJECTIONS
The Examiner made the following rejections:
Claims 1—3, 5, 11, 12, 14—21, 23, 24, and 28—33 are rejected under 35
U.S.C. § 101 because the claimed invention is directed to a judicial
exception (i.e., a law of nature, a natural phenomenon, or an abstract idea)
without significantly more.
Claims 1—3, 5, 11, 12, 14—21, 23, 24 and 28—33 are rejected under
pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Chen in view of
Lynch.
FINDINGS OF FACT
We rely on the Examiner’s factual findings stated in the Answer.
Additional findings of fact may appear in the Analysis below.
ANALYSIS
35 U.S.C. § 101 Non-Statutory Subject Matter
Appellants argue the claims as a group. See App. Br. 5—11. We select
claim 1 as the representative claim for this group, and the remaining claims
2, 3, 5, 12, 14—21, 23, 24, and 28—33 stand or fall with claim 1. 37 C.F.R.
§ 41.37(c)(l)(iv).
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In the Examiner’s Answer, the Examiner made a new ground of
rejection based upon 35U.S.C. § 101. The Examiner analyzed the claims in
accordance with the two-step framework for determining whether claimed
subject matter is judicially-excepted from patent eligibility under § 101 as
articulated in Alice Corp. Pty. Ltd. v. CIS Bank Intern., 134 S.Ct. 2347
(2014). (Ans. 2—3, 4—8). In accordance therewith, the Examiner finds that
(1) “the claims are directed towards the abstract idea of comparing stored
geographical criteria and travel criteria using basket rules in order to identify
more baskets” (Reply Br. 2, citing Ans. 3), and (2) The additional element(s)
or combination of elements in the claim(s) other than the abstract idea per se
amount(s) to no more than: (i) mere instructions to implement the idea on a
computer, and/or (ii) recitation of generic computer structure that serves to
perform generic computer functions that are well-understood, routine, and
conventional activities previously known to the pertinent industry. Viewed
as a whole, these additional claim element(s) do not provide meaningful
limitation(s) to transform the abstract idea into a patent eligible application
of the abstract idea such that the claim(s) amounts to significantly more than
the abstract idea itself. Therefore, the claim(s) are rejected under 35 U.S.C.
§ 101 as being directed to non-statutory subject matter. (Ans. 2—3). From
this, the Examiner determined that the claimed subject matter runs afoul of
35 U.S.C. § 101.
For the reasons discussed in detail below, Appellants’ arguments do
not persuade us as to error in the rejection.
Alice identifies a two-step framework for determining whether
claimed subject matter is judicially-excepted from patent eligibility under §
101.
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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.
Appellants’ challenge to the rejection fails to show error in the
Examiner’s rejection. Appellants generally contend “[t]he Examiner has
failed to establish a prima facie case that claim 1 is ineligible under step 2A
of the two-part test to determine eligible subject matter.” (Reply Br. 2).
Appellants contend that the “Examiner has failed to establish through
documentary evidence that the claims are directed to an abstract idea, or a
concept similar to those ‘identified by the courts by way of example,
including fundamental economic practices, certain methods of organizing
human activities, an idea 'of itself,' and mathematical relationship s/formulas’
that would be properly considered to be a fundamental building block”
(Reply Br. 2—3).
Appellants further contend “the absence of evidentiary support and
adequately-supported factual findings made on the record in the Office
Action, the Examiner has violated the substantial evidence standard by
relying on unsupported conclusions in alleging that the claims are directed to
an abstract idea.” (Reply Br. 3).
Examining earlier cases can have a role, especially in deciding
whether a concept that claims are found to be directed to is an abstract idea.
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.”)
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Although, we do not consider the specific cases either controlling or
germane, that panel’s consideration of evidence in making a determination
under the first step of the Alice framework has merit. A similar approach
was taken in Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229 (Fed. Cir. 2016).
But these cases do not stand for the proposition that Examiners must provide
evidentiary support in every case before a conclusion can be made that a
claim is directed to an abstract idea. There is no such requirement. See, e.g.,
para. IV “July 2015 Update: Subject Matter Eligibility” to 2014 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.
(Emphasis added). Evidence may be helpful in certain situations where, for
instance, facts are in dispute. But it is not always necessary. It is not
necessary in this case.
We find Appellants’ general contention to not show error in the
Examiner’s findings and conclusion of a lack of patent-eligible subject
matter.
Appellants further contend “Claim 1 recites a combination of
elements that amount to ‘significantly more’ than an abstract idea, under
step 2B of the two-part test to determine eligible subject matter.” (Reply Br.
4)(emphasis omitted).
Appellants further argue that:
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In the Examiner's Reply dated February 16, 2016, the
Examiner alleged that the claims do not include additional
elements that are sufficient to amount to significantly more than
the judicial exception. Instead, the claims allegedly recite a
combination of elements that amount to no more than the
recitation of a generic computer structure that performs routine
and well-understood activities. (Examiner's Reply, pg. 3.)
Appellant respectfully disagrees with the Examiner's position.
As clearly explained in the application as filed, existing travel
systems may provide a traveler with various transportation
solutions, however these solutions are not efficient.
(Application, pg. 1, 11. 26-28.) Specifically, existing travel
solutions provide travel recommendations based on a limited
number of travel providers. Thus, in many instances only one
relevant travel recommendation may be provided to a traveler.
The traveler is at a disadvantage, as he or she is unable to make
relevant comparisons between travel recommendations, and is
therefore unable to make the best selection possible.
(Application, pg. 1, 11. 29-32.)
The claimed combination of components in claim 1 solves
the above-mentioned problems encountered by existing travel
providers by efficiently processing a single travel request in
order to yield a complete set of travel solutions from multiple
travel providers. (Application, pg. 9, 11. 3-11.) Specifically, the
method of claim 1 retrieves travel solutions from various travel
solutions based on a single basket rule. The single basket rule
may be used to determine which baskets may be used to retrieve
travel solutions. (Application, pg. 8, 11. 4-8.) Thus, unlike
current travel systems, the disclosed approach may search more
than one travel provider based on receiving a single travel
request. (Application, pg. 9, 11. 12-1626.) Thus, claim 1
considered as a whole adds significantly more to the alleged
generic computer structure than simply performing a generic
computer function that is well-understood and routine as alleged
by the Examiner. For at least this additional reason, the claims
are directed to patent-eligible subject matter under step 2B of the
analysis outlined in the Interim Eligibility Guidance.
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(Reply Br. 4—5). Appellants additionally contend:
In the 2014 Guidance, the USPTO specifically states that
“[e]very claim must be examined individually, based on the
particular elements recited therein, and should not be judged to
automatically stand or fall with similar claims in an application”.
See 79 Fed. Reg. at 74624. The 2014 Guidance further sets forth
that “if the claim includes additional elements, [the Examiner
must] identify the elements in the rejection and explain why they
do not add significantly more to the exception”. See id. This
requirement is further emphasized in the 2015 Guidance, which
states that the Examiner's burden in making a prima facie case
“is met by clearly articulating the reason(s) why the claimed
invention is not eligible, for example by providing a reasoned
rationale that. . . identifies the additional elements in the claim
(if any) and explains why they do not amount to significantly
more than the exception”. See 2015 Guidance, pg. 6.
In concluding that the claims do not amount to
significantly more than the alleged abstract idea, the Examiner
merely groups all of the claims together and asserts that “[t]he
dependent claims 2, 3. 5. 14-21, 23-24 and 28-33 do not add
significantly more to the abstract idea, as they merely recite the
field of use of the claimed invention”. See Office Action, pp. 3-
4. Not only does this analysis fail to examine each claim
individually, but it also fails to separately identify and explain
each additional element of each claim, as required by the
USPTO's Guidance. For example, dependent claim 5 sets forth
that “receiving, from each selected source, a source plug-in that
is configured to interface with the aggregator and provide each
travel solution that satisfies the travel search criteria to the
aggregator”, which even further limits the aggregation of travel
solutions that are provided to a traveler.
Because neither the specific elements of this claim nor the
specific elements of any other dependent claim are separately
identified and explained in the rejection, a prima facie case of
ineligible subject matter is absent under the USPTO's Subject
Matter Eligibility Guidelines. For at least this additional reason,
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the Applicant respectfully requests that the rejection under 35
U.S.C. § 101 be withdrawn.
(Reply Br. 5—6).
While we agree with Appellants that the Examiner addressed the
dependent claims in an abbreviated manner, we agree with the Examiner’s
conclusion that the dependent claims do not add significantly more on their
face.
For example, with respect to dependent claim 2, claim 2 does not
further limit the method of independent claim 1 and merely recites “a travel
planning system provided by a ground travel solution provider or an air
travel solution provider” which identifies a source of the “travel planning
system” which is not recited or used in independent claim 1. Consequently,
claim 2 does not limit the method and cannot “amount to significantly more
than the alleged abstract idea.”
With respect to dependent claim 3, the claim identifies a label for the
source of the data which does not “amount to significantly more than the
alleged abstract idea.”
With respect to dependent claim 5, the only claim specifically
addressed by Appellants, the claim recites “receiving, from each selected
source, a source plug-in that is configured to interface with the aggregator
and provide each travel solution that satisfies the travel search criteria to
the aggregator.”
Appellants do not identify how the step of receiving “amount[s] to
significantly more than the alleged abstract idea.”1 We find this step to be
1 Merely reciting the language of the claim is insufficient. See 37 C.F.R.
§ 41.37(c)(l)(iv) (“A statement which merely points out what a claim recites
will not be considered an argument for separate patentability of the claim.”).
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unrelated to the method steps recited in independent claim 1. We further
find the language of independent claim 1 is drafted with “one or more” as a
modifier for the sources and the solutions. The broadest reasonable
interpretation is a single source with a single solution which would limit
claim 5 to single plug-in, but the plug-in is not expressly used or limiting in
the method. We will not speculate as to how the step of receiving a plug-in
further limits the method of independent claim 1. Consequently, we agree
with the Examiner that claim 5 does not “amount to significantly more than
the alleged abstract idea.”
With respect to dependent claim 23, the claim merely recites
displaying the travel solutions/results which is no more than extra-solution
activity which does not “amount to significantly more than the alleged
abstract idea.”
With respect to dependent claims 28 and 29, using the broadest
reasonable interpretation discussed above, only one basket, one source, and
one solution are required by dependent claim 28. Consequently, one source
is selected and the request forwarded thereto which does not further limit
independent claim 1 to “amount to significantly more than the alleged
abstract idea.”
Attorney arguments and conclusory statements that are unsupported by
factual evidence are entitled to little probative value. In re Geisler, 116 F.3d
1465, 1470 (Fed. Cir. 1997); see also In re De Blauwe, 736 F.2d 699, 705
(Fed. Cir. 1984); and Ex parte Belinne, No. 2009-004693, slip op. at 7—8
(BPAI Aug. 10, 2009) (informative), available at
httn://www.usnto.gov/web/offices/dcom/bnai/its/fd09004693.ndf.
Here, we find Appellants’ arguments are conclusory in nature and fail
to address the thrust of the Examiner’s lack of patent eligible subject matter
rejections.
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Dependent claim 29, further limits the labels on the identified
“characteristics” recited in dependent claim 28 and independent claim 1.
We agree with the Examiner that the label placed on the characteristics does
not “amount to significantly more than the alleged abstract idea.”
None of the 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 claimed sequence of steps comprises only “conventional
steps, specified at a high level of generality,” which is insufficient to supply
an “inventive concept.” Id. at 2357 (quoting Mayo, 132 S.Ct. at 1294, 1297,
1300).
We have considered all the Appellants’ arguments but find them
unpersuasive as to error in the rejection. The rejection is sustained.
35U.S.C. § 103
Appellants argue independent claims 1,11, and 12 together. (App.
Br. 4 “For the purpose of this appeal, the focus will be placed on the subject
matter of independent claim 1, as reversal of the rejections of that claim
moots the rejections of the dependent claims”2; see also “These claims are
not separately argued.” App. Br. 10-11). As a result, we select independent
claim 1 as the representative claim and will address Appellants’ arguments
thereto. 37 C.F.R. § 41.37(c)(l)(iv).
2 We further note Appellants have not provided a summary of the claimed
subject matter independent claims 11 and 12 as required by 37 C.F.R.
§ 41.37(c)(l)(iv).
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With respect to representative independent claim 1, Appellants repeat
the language of the claim and contend that the Chen and Lloyd references do
not disclose the claimed invention. Appellants argue:
“Thus, Chen and Lynch fail to disclose "accessing a plurality of
basket rules in a rules database with a rules engine, each basket
rule defined for a market designated by a pair of geographic
criteria", "determining a single basket rule ... for which the
market designation matches the geographic requirement of the
itinerary of the travel search criteria," "selecting, for each basket,
each travel source ... with a market designation that satisfies the
geographic requirement of the itinerary of the travel search
criteria," and "forwarding, for each basket, the travel request to
each travel source for which the geographic requirement is
satisfied" as recited in claim 1.”
(App. Br. 5—9). Specifically, Appellants contend “Chen does not teach or
suggest the use of a market designated by geographical criteria in
conjunction with market designations to select travel sources to respond to a
travel request at all.” (App. Br. 8).
The Examiner explains the portions of the Chen and Lloyd
references which are relied upon:
“Lynch has described receiving a customer's travel request and
selecting CRSs that would satisfy the requested travel, wherein
the selection is based on the market of the travel. The
combination of Chen and Lynch describes selecting travel
sources based on a travel requests which include geographic
criteria and travel characteristics.
(Ans. 7). We agree with the Examiner and find that Appellants merely
repeat the language of the claim and contend references do not teach or
suggest the claimed invention. We find that both the Chen and Lloyd
references are directed to travel and clearly relate to multiple modes of
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transportation which are aggregated for the user which would have both
beginning and ending locations/geographical criteria. We do not find that
Appellants’ general contentions show error in the Examiner’s factual
findings or conclusion of obviousness of representative independent claim 1.
As a result, we sustain the rejection of representative independent claim 1.
In the Reply Brief, Appellants clarify that the Examiner is reading
Appellants’ arguments out of context, and Appellants reiterate that:
the Appeal Brief also explains that ‘Tnlowhere does Lynch teach
or suggest the selected CRS is based on basket markets each
designated by a pair of geographical criteria and market
designations of the travel sources as claimed”. (Emphasis
added.) In other words, Appellant was explaining that Lynch
does not make up for the deficiencies of Chen. Instead, Lynch
simply teaches selecting a CRS based on a variety of factors such
as, but not limited to, the originating and destination city.
Indeed, Chen and Lynch both do not teach or suggest
“determining a single basket rule ... for which the market
designation matches the geographic requirement of the itinerary
of the travel search criteria”, “selecting, for each basket, each
travel source . . . with a market designation that satisfies the
geographic requirement of the itinerary of the travel search
criteria”, and “forwarding, for each basket, the travel request to
each travel source for which the geographic requirement is
satisfied” as recited in claim 1.
(Reply Br. 7). We find “basket market” is not recited in the language of
independent claim 1 and is not commensurate in scope with the express
language of independent claim 1.
“In the patentability context, claims are to be given their broadest
reasonable interpretations . . . limitations are not to be read into the claims
from the specification.” In re Van Geuns, 988 L.2d 1181, 1184 (Led.
Cir. 1993) (citations omitted). Any special meaning assigned to a term
“must be sufficiently clear in the specification that any departure from
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common usage would be so understood by a person of experience in the
field of the invention.” Multiform Desiccants, Inc. v. Medzam, Ltd., 133
F.3d 1473, 1477 (Fed. Cir. 1998); see also Helmsderfer v. Bobrick
Washroom Equip., Inc., 527 F.3d 1379, 1381 (Fed. Cir. 2008) (“A patentee
may act as its own lexicographer and assign to a term a unique definition
that is different from its ordinary and customary meaning; however, a
patentee must clearly express that intent in the written description”). Absent
an express intent to impart a novel meaning to a claim term, the words take
on the ordinary and customary meanings attributed to them by those of
ordinary skill in the art. Brookhill-Wilk 1, LLC v. Intuitive Surgical, Inc.,
334 F.3d 1294, 1298 (Fed. Cir. 2003) (citation omitted).
Applicants always has the opportunity to amend the claims during
prosecution and broad interpretation by the examiner reduces the possibility
that the claim, once issued, will be interpreted more broadly than is justified.
In re Prater, 415 F.2d 1393, 140A-05 (CCPA 1969).
From our review of Appellants’ Specification, we find Appellants use
the term “defined” repeatedly, but Appellants do not specifically define any
of the terms used in the claims, and Appellants have not identified any
specific definition for any claim terminology. (Spec. 4—7). As a result,
interpreting the claims based upon the broadest reasonable interpretation, we
agree with the Examiner that the combination of the Chen and Lloyd
references teaches or suggests the claimed invention recited in representative
independent claim 1, and Appellants’ arguments have not shown error in the
Examiner’s factual findings or ultimate conclusion of obviousness of
representative independent claim 1. Appellants do not set forth separate
arguments for patentability of independent claims 11 and 12 or any of the
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dependent claims and merely repeat the language of the claims. (App. Br.
10-11).
CONCLUSIONS
The Examiner did not err in rejecting claims 1—3, 5, 12, 14—21, 23, 24,
and 28—33 based upon a lack of patent eligible subject matter under 35
U.S.C. § 101 and the Examiner did not err in rejecting claims 1—3, 5, 12, 14—
21, 23, 24, and 28—33 based upon a obviousness under 35 U.S.C. § 103.
DECISION
For the above reasons, we sustain the Examiner’s rejections of claims
1-3, 5, 12, 14—21, 23, 24, and 28-33 under 35 U.S.C. §§ 101 and 103. No
time period for taking any subsequent action in connection with this appeal
maybe extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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