Howard W. Lutnick et al.

Patent Trials and Appeals Board

Oct 22, 2019

13336534 - (D) (P.T.A.B. Oct. 22, 2019)

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.
13/336,534 12/23/2011 Howard W. LUTNICK 01-1031-C2 4750
63710 7590 10/22/2019
INNOVATION DIVISION
CANTOR FITZGERALD, L.P.
110 EAST 59TH STREET (6TH FLOOR)
NEW YORK, NY 10022
EXAMINER
ZARE, SCOTT A
ART UNIT PAPER NUMBER
3649
NOTIFICATION DATE DELIVERY MODE
10/22/2019 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):
lkorovich@cantor.com
patentdocketing@cantor.com
phowe@cantor.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte HOWARD W. LUTNICK and GLENN KIRWIN
____________________

Appeal 2018-006951
Application 13/336,534
Technology Center 3600
____________________

Before JUSTIN BUSCH, LINZY T. McCARTNEY, and
JOYCE CRAIG, Administrative Patent Judges.

McCARTNEY, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 seeks review under 35 U.S.C. § 134 of the Examiner’s
final rejection of claims 1, 4–6, 10–12, 14–23, and 25–28. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 Appellant identifies CFPH, LLC as the real party in interest. Appeal Brief
2, filed March 14, 2018 (“App. Br.”).
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BACKGROUND
This patent application concerns “enabling users to make purchase
decisions by offering step-by-step interactive assistance.” Specification ¶ 2,
filed December 23, 2011 (“Spec.”). Claim 1 illustrates the claimed subject
matter:
1. A method of providing computerized interactive
assistance for computers, the method comprising:
[1] receiving, by at least one computer processor of at least
one computer in electronic communication with a plurality of
other computers via a computer network, from a user an
indication of a total amount of money available for purchases by
the user;
perform the following plurality of steps:
[2] presenting, by at least one computer processor,
to the user, at a graphical user interface of an electronic
display device in electronic communication with the at
least one computer processor, a plurality of categories of
goods and/or services;
[3] receiving, by at least one computer processor,
from the user via at least one input device of the electronic
display device a selection of at least one of the categories;
[4] based at least in part on the selection, by at least
one computer processor, presenting to the user at the
graphical user interface a question and a plurality of
possible answers to the question;
[5] receiving, by at least one computer processor,
from the user via the at least one input device a selection
of at least one of the possible answers to the question;
[6] presenting, by at least one computer processor,
to the user at the graphical user interface a set of potential
goods and/or services based at least in part on:
[6.1] a) the selected at least one of the
possible answers to the question and
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[6.2] b) the indicated total amount of money
available for purchases by the user less a cumulative
total of purchase prices of any goods and/or services
that were previously selected by the user,
[6.3] in which information about the set of
potential goods and/or services, including a
purchase price of said potential goods and/or
services, is received via an electronic
communication network from one or more
computers of one or more sellers and/or service
providers; and
[7] receiving, by at least one computer processor,
from the user via the at least one input device a selection
of a good and/or service from the set of potential goods
and/or services;
[8] automatically detecting, by the at least one
computer processor, that total goods and/or services
exceed the total amount of money available for purchases
by the user, and in response to the detecting, automatically
presenting, by the at least one computer processor, to the
user an update at the graphical user interface with a
warning indication regarding potential to exceed the total
amount of money available for purchases by the user
which prevents the user from selecting goods and/or
services that would exceed the total amount of money
available for purchases by the user; and
[9] iteratively perform the plurality of steps at least
one more time.
App. Br. 17–18 (bracketed numbers added).
REJECTION
Claims Basis
1, 4–6, 10–12, 14–23, 25–28 § 101

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DISCUSSION
We have reviewed the Examiner’s rejection and Appellant’s
arguments, and we disagree with Appellant that the Examiner erred. As
consistent with the discussion below, we adopt the Examiner’s reasoning,
findings, and conclusions on pages 2–10 of the Final Office Action mailed
September 26, 2017 (“Final Act.”) and on pages 3–6 of the Examiner’s
Answer mailed April 26, 2018 (“Ans.”).
Section 101 Rejection
Section 101 of the Patent Act provides that “any new and useful
process, machine, manufacture, or composition of matter, or any new and
useful improvement thereof” is patent eligible. 35 U.S.C. § 101. But the
Supreme Court has long recognized an implicit exception to this section:
“Laws of nature, natural phenomena, and abstract ideas are not patentable.”
Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014) (quoting Ass’n for
Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)).
To determine whether a claim falls within one of these excluded categories,
the Court has set out a two-part framework. The framework requires us first
to consider whether the claim is “directed to one of those patent-ineligible
concepts.” Alice, 573 U.S. at 217. If so, we then examine “the elements of
[the] claim both individually and ‘as an ordered combination’ to determine
whether the additional elements ‘transform the nature of the claim’ into a
patent-eligible application.” Alice, 573 U.S. at 217 (quoting Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 78, 79 (2012)).
That is, we examine the claim for an “inventive concept,” “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
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concept] itself.’” Alice, 573 U.S. at 217–18 (alteration in original) (quoting
Mayo, 566 U.S. at 72–73).
The Patent Office has revised its guidance about this framework. See
2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50
(Jan. 7, 2019) (“Revised Guidance”). Under the Revised Guidance, to decide
whether a claim is directed to an abstract idea, we evaluate whether the
claim (1) recites subject matter that falls within one of the abstract idea
groupings listed in the Revised Guidance and (2) fails to integrate the recited
abstract idea into a practical application. See Revised Guidance, 84 Fed.
Reg. at 51, 54. If the claim is directed to an abstract idea, as noted above, we
then determine whether the claim has an inventive concept. The Revised
Guidance explains that when making this determination, we should consider
whether the additional claim elements add “a specific limitation or
combination of limitations that are not well-understood, routine,
conventional activity in the field” or “simply append[] well-understood,
routine, conventional activities previously known to the industry, specified
at a high level of generality.” Revised Guidance, 84 Fed. Reg. at 56.
With these principles in mind, we turn to the § 101 rejection.
Abstract Idea
The Revised Guidance explains that the abstract idea exception
includes “certain methods of organizing human activity” such as
fundamental economic principles or practices, commercial or legal
interactions, and managing personal behavior or relationships or interactions
between people. Revised Guidance, 84 Fed. Reg. at 52. The Examiner
determined that claim 1 recites subject matter that falls within this abstract
idea grouping. See, e.g., Final Act. 5 (determining that “the claimed concept
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amounts to nothing more a fundamental economic practice”), 6 (determining
that “the claims are directed to a method of organizing human activity”).
We agree. Claim 1 recites a method that includes limitations [1]–[9]
reproduced above. These limitations recite receiving “an indication of a total
amount of money available for purchases by the user” and permitting the
user to select goods or services through what the written description calls a
“question-and-answer process.” App. Br. 17; Spec. ¶¶ 9–14. These
limitations also recite automatically detecting “that total goods and/or
services exceed the total amount of money available for purchases by the
user” and, in response to the detecting, automatically presenting “a warning
indication regarding potential to exceed the total amount of money available
for purchases by the user which prevents the user from selecting goods
and/or services that would exceed the total amount of money available for
purchases by the user.” App. Br. 18.
Limitations [1]–[9] recite a commercial practice that involves
concepts that courts have determined are abstract ideas. See, e.g., In re
Greenstein, No. 2019-1382, 2019 WL 3060986, at *2–4 (Fed. Cir. July 12,
2019) (providing purchasing or leasing recommendations for goods or
services); Mortg. Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d
1314, 1324 (Fed. Cir. 2016) (enabling borrowers to anonymously shop for
loan packages); Intellectual Ventures I LLC v. Capital One Bank (USA), 792
F.3d 1363, 1367 (Fed. Cir. 2015) (tracking financial transactions to
determine whether they exceed a pre-set spending limit). We thus agree with
the Examiner that claim 1 recites certain methods of organizing human
activity. See Revised Guidance, 84 Fed. Reg. at 52 (explaining that certain
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methods of organizing human activity include commercial or legal
interactions and fundamental economic principles or practices).
Appellant contends that the Examiner “oversimplified” claim 1 “by
failing to consider” the automatically detecting and automatically presenting
steps recited in limitation [8]. See App. Br. 8. Appellant also argues that the
Examiner failed to cite court decisions “reasonably tied to the facts of the
case” and relied “upon language taken out of context” to support the
Examiner’s determination that claim 1 recites an abstract idea. See App. Br.
9 (emphases omitted).
We see no merit in these arguments. The Examiner explicitly
addressed limitation [8] in the Final Office Action and the Examiner’s
Answer. See, e.g., Final Act. 3–8; Ans. 3–5. As for Appellant’s contention
that the Examiner failed to cite a court decision “reasonably tied to the facts
of the case” and relied on “language taken out of context,” Appellant has
provided no persuasive reasoning to support this argument. See App. Br. 9.
Appellant does not persuasively explain why the cases cited by the Examiner
are not “reasonably tied to the facts of the case.” See App. Br. 9. Nor does
Appellant identify the language that the Examiner allegedly took out of
context, let alone adequately explain how the Examiner took that language
out of context. See App. Br. 9. We thus find this inadequately supported
argument unpersuasive.
Because we determine that claim 1 recites an abstract idea, we next
consider whether claim 1 integrates the abstract idea into a practical
application. See Revised Guidance, 84 Fed. Reg. at 51. In doing so, we
consider whether the claim as a whole “integrate[s] the [abstract idea] into a
practical application, using one or more of the considerations laid out by the
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Supreme Court and the Federal Circuit.” Revised Guidance, 84 Fed. Reg. at
54–55. This includes considering whether any additional elements, in the
context of the claim as a whole, integrate the abstract idea into a practical
application.
The additional elements recited in claim 1 include computer hardware
and software components such as “at least one computer processor of at least
one computer in electronic communication with a plurality of other
computers via a computer network,” “at least one computer processor,” and
“a graphical user interface of an electronic display device in electronic
communication with the at least one computer processor,” the electronic
display device comprising “at least one input device.” App. Br. 17–18. The
additional elements also include “an electronic communication network
from one or more computers of one or more sellers and/or service
providers.” App. Br. 17.
The Examiner determined that “any additional elements recited” in
claim 1 include “generic computer components” that “perform generic
functions.” Final Act. 7. We agree. The written description indicates that the
disclosed invention encompasses any appropriate component. See, e.g.,
Spec.¶¶ 15 (disclosing that “various features of the present invention may be
implemented with any type of interactive purchasing system”), 51
(“Interactive purchasing system 19 and interactive assistance provided by it
. . . may be fashioned in any suitable form, appropriate for each different
purchase activity.”), 52 (“The systems and methods of the present invention
may be implemented using any suitable communication network.”), 54
(“Any suitable Internet connections 54 and 55 may be used in
communication network 50 in accordance with the present invention.”). And
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to the extent that the written description describes the additional elements
and the functions they perform, the written description does so in passing
and with few implementation details. See, e.g., Spec. ¶¶ 34 (listing various
“means” for performing the functions recited in claim 1), 35 (“At the
beginning of a process 20, interactive purchasing system 19 may provide an
interface for inputting data and/or responses.”), 36 (disclosing that
“interactive purchasing system 19 may be permanently connected to 15
computer servers or databases of pre-selected sellers/service providers 12”),
52 (disclosing that “[a] user’s computer 53 and servers or databases of
sellers/service providers 51 may be connected to Internet web page server
52”). This indicates that the additional elements and the functions that they
perform are generic. See Intellectual Ventures I LLC v. Erie Indem. Co., 850
F.3d 1315, 1331 (Fed. Cir. 2017) (“The claimed mobile interface is so
lacking in implementation details that it amounts to merely a generic
component (software, hardware, or firmware) that permits the performance
of the abstract idea, i.e., to retrieve the user-specific resources.”); Hybritech
Inc. v. Monoclonal Antibodies, Inc., 802 F.2d 1367, 1384 (Fed. Cir. 1986)
(“[A] patent need not teach, and preferably omits, what is well known in the
art.”).
In short, the claimed method uses generic computer components that
perform generic functions to implement the recited abstract idea. Using
generic computer components that perform generic functions to implement
an abstract idea does not integrate the abstract idea into a practical
application. See Alice, 573 U.S. at 223–24 (“[W]holly generic computer
implementation is not generally the sort of ‘additional featur[e]’ that
provides any ‘practical assurance that the process is more than a drafting
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effort designed to monopolize the [abstract idea] itself.’” (quoting Mayo,
566 U.S. at 77)). Yet Appellant contends that claim 1 is patent eligible
because the claimed invention allegedly “improve[s] computer performance
by employing techniques to automatically detect cost exceeding conditions
and automatically generate warnings based on those conditions to prevent
generating purchase transactions.” App. Br. 12 (emphases omitted).
According to Appellant, “[t]hese techniques may help reduce the amount of
activity or traffic over the network . . . which may help reduce computer
workload including computer resources such as memory resources,
processor resources, and network resources such as network bandwidth.”
App. Br. 12; see also App. Br. 9 (making similar arguments).
We disagree. First, as discussed above, the techniques that Appellant
contends improve computer performance—automatically detecting cost
exceeding conditions and automatically generating warnings to prevent
purchases—form part of the identified abstract idea. The abstract idea itself
cannot integrate the abstract idea into a practical application. See Trading
Techs. Int’l, Inc. v. IBG LLC, 921 F.3d 1084, 1093 (Fed. Cir. 2019) (“The
abstract idea itself cannot supply the inventive concept, ‘no matter how
groundbreaking the advance.’” (quoting SAP Am., Inc. v. InvestPic, LLC,
898 F.3d 1161, 1170 (Fed. Cir. 2018))). Second, the alleged benefits are
speculative. Appellant argues that “[t]hese techniques may help reduce the
amount of activity or traffic over the network . . . which may help reduce
computer workload.” App. Br. 12 (emphases added). Appellant has provided
no persuasive evidence that the claimed invention actually provides these
benefits. Third, even if Appellant had shown that the claimed invention
provides these benefits, the claimed invention does not improve computer
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performance. The claimed invention does not change how computers
operate, let alone improve how computers operate. The claimed invention
simply uses generic computer components and functions to implement the
identified abstract idea. See App. Br. 17–18.
Appellant also contends that claim 1 is patent eligible because the
claim is allegedly similar to the patent-eligible claims in Core Wireless
Licensing S.A.R.L. v. LG Electronics., Inc., 880 F.3d 1356 (Fed. Cir. 2018).
See App. Br. 12–13. Appellant argues that as in Core Wireless, claim 1
provides “an improved user interface which may increase the efficiency of
using the electronic devices.” App. Br. 13 (emphasis omitted). But in Core
Wireless, the claims at issue “disclose[d] a specific manner of displaying a
limited set of information to the user, rather than using conventional user
interface methods to display a generic index on a computer” and the written
description “confirm[ed] that [the] claims disclose[d] an improved user
interface for electronic devices.” Core Wireless, 880 F.3d at 1363. In
contrast, claim 1 recites that a graphical user interface presents certain
information without meaningfully specifying how that information is
displayed. See App. Br. 17–18. And the accompanying written description
provides little detail about the graphical user interface and does not show
that the interface is an improvement over prior art interfaces. See, e.g., Spec.
¶¶ 25 (disclosing that “[a]n interactive purchase system 19 may provide an
interface for a user 11 to enter data or responses”), 34 (disclosing
“[i]nterface means to present questions and selectable lists to, and receive
responses, data, and selections from, user”). Claim 1 is thus distinguishable
from the patent-eligible claims in Core Wireless.
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Appellant next contends that the features of claim 1 “do not preempt
all ways of achieving the intended result because the claimed recitations are
very specific and do not cover all possible approaches.” App. Br. 14
(emphasis omitted). Even if this is true, failing to completely preempt an
abstract idea does not establish that claim 1 is patent eligible. “While
preemption may signal patent ineligible subject matter, the absence of
complete preemption does not demonstrate patent eligibility.” Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015).
In sum, claim 1 uses generic computer components that perform
generic computer functions as tools to implement the identified abstract idea.
Claim 1 thus does not integrate the abstract idea into a practical application.
See Alice, 573 U.S. at 223–24. Claim 1 is thus directed to an abstract idea.
Inventive Concept
Finally, we consider whether claim 1 has an inventive concept, that is,
whether the claim has additional elements that “‘transform the nature of the
claim’ into a patent-eligible application.” Alice, 573 U.S. at 217 (quoting
Mayo, 566 U.S. at 78, 79). As discussed above, this requires us to evaluate
whether the additional claim elements add “a specific limitation or
combination of limitations that are not well-understood, routine,
conventional activity in the field” or “simply append[] well-understood,
routine, conventional activities previously known to the industry, specified
at a high level of generality.” Revised Guidance, 84 Fed. Reg. at 56.
The Examiner found that the additional elements recited in claim 1
perform well-understood, routine, and conventional functions. See Final Act.
7. In response, Appellant argues that claim 1 recites “specific computer
operations that allow the computer to perform a function that conventional
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computers cannot perform.” App. Br. 8 (emphases omitted). In particular,
Appellant asserts that several steps, including the steps of automatically
detecting “cost exceeding conditions” and automatically presenting warnings
based on those conditions to prevent purchases, are not well-understood,
routine, and conventional activities. See Reply Brief 3–4, filed June 25,
2018.
We disagree. As discussed above, the written description describes the
additional elements at a high level of generality, provides few technical
details about how the additional elements operate, and indicates that the
invention encompasses any suitable components. See, e.g., Spec. ¶¶ 15, 34–
36, 51–54. This shows that the additional elements and their associated
functions are well-understood, routine, and conventional. See Hybritech, 802
F.2d at 1384 (“[A] patent need not teach, and preferably omits, what is well
known in the art.”); USPTO, Memorandum on Changes in Examination
Procedure Pertaining to Subject Matter Eligibility, Recent Subject Matter
Eligibility Decision (Berkheimer v. HP, Inc.) at 3 (Apr. 19, 2018), available
at https://www.uspto.gov/sites/default/files/documents/memo-berkheimer-
20180419.PDF (explaining that a specification that describes additional
elements “in a manner that indicates that the additional elements are
sufficiently well-known that the specification does not need to describe the
particulars of such additional elements to satisfy 35 U.S.C. § 112(a)” can
show that the elements are well understood, routine, and conventional).
In addition, courts have recognized that the functions performed by
the additional elements are well-understood, routine, and conventional
computer functions. Claim 1 recites that the additional elements receive and
present information such as options and warnings. See App. Br. 17–18.
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Receiving information and presenting information are well-understood,
routine, and conventional computer functions. See Intellectual Ventures I,
850 F.3d at 1331 (“But receiving transmitted data over a network and
displaying it to a user merely implicates purely conventional activities that
are the ‘most basic functions of a computer.’” (quoting Alice, 573 U.S. at
225)); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014)
(“That a computer receives and sends the information over a network—with
no further specification—is not even arguably inventive.”). Claim 1 also
recites that certain additional elements automatically detect whether the
“total goods and/or services exceed the total amount of money available for
purchases.” App. Br. 18. This step encompasses the type of basic
mathematical calculations and electronic recordkeeping that computers
routinely perform. See, e.g., Alice, 573 U.S. at 225 (“Using a computer to
create and maintain ‘shadow’ accounts amounts to electronic
recordkeeping—one of the most basic functions of a computer.”), 226
(“Nearly every computer will include a ‘communications controller’ and
‘data storage unit’ capable of performing the basic calculation, storage, and
transmission functions required by the method claims.”); Bancorp Servs.,
L.L.C. v. Sun Life Assur. Co. of Canada (U.S.), 687 F.3d 1266, 1278 (Fed.
Cir. 2012) (“The computer required by some of Bancorp’s claims is
employed only for its most basic function, the performance of repetitive
calculations, and as such does not impose meaningful limits on the scope of
those claims.”).
In sum, for the above reasons, we determine that the recited additional
elements, considered individually or in an ordered combination, “simply
append[] well-understood, routine, conventional activities previously known
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to the industry, specified at a high level of generality.” Revised Guidance, 84
Fed. Reg. at 56. We therefore determine that claim 1 does not recite an
inventive concept.
Summary
For the reasons discussed above, claim 1 is directed to an abstract idea
and does not have an inventive concept. We therefore sustain the Examiner’s
rejection of claim 1 under § 101. Appellant does not present separate
substantive arguments for claims 4–6, 10–12, 14–23, and 25–28. See App.
Br. 15. We thus also sustain the Examiner’s rejection of these claims under
§ 101.

CONCLUSION
Claims
Rejected Basis Affirmed Reversed
1, 4–6, 10–12,
14–23, 25–28 § 101
1, 4–6, 10–12,
14–23, 25–28

No period for taking any action in connection with this appeal may be
extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 41.50(f).

AFFIRMED