Kevin Wang

Patent Trials and Appeals Board

Dec 20, 2021

2020005868 (P.T.A.B. Dec. 20, 2021)

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.
14/967,301 12/12/2015 Kevin Sunlin Wang 10235-3 2381
22442 7590 12/20/2021
Sheridan Ross PC
1560 Broadway
Suite 1200
Denver, CO 80202
EXAMINER
FADOK, MARK A
ART UNIT PAPER NUMBER
3625
NOTIFICATION DATE DELIVERY MODE
12/20/2021 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):
e-docket@sheridanross.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte KEVIN SUNLIN WANG
____________

Appeal 2020-005868
Application 14/967,301
Technology Center 3600
____________

Before BIBHU R. MOHANTY, BRADLEY B. BAYAT, and
TARA L. HUTCHINGS, Administrative Patent Judges.

BAYAT, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

Kevin S. Wang (Appellant)1 filed a Request for Rehearing on May 7,
2021 (“Request”) pursuant to 37 C.F.R. § 41.52 for reconsideration of our
Decision on Appeal mailed March 18, 2021 (“Decision”). The Decision
affirmed the Examiner’s rejection of claims 1 and 119–147 under 35 U.S.C.
§ 101 as being directed to an abstract idea without significantly more. See
Decision 16. We have jurisdiction over the Request under 35 U.S.C. § 6(b).
We note at the outset that a Request for Rehearing “must state with
particularity the points believed to have been misapprehended or overlooked

1 We use the term “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as “Bynfor,
Inc.” Appeal Br. 2.
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by the Board.” 37 C.F.R. § 41.52(a)(1). A Request for Rehearing is not an
opportunity to rehash arguments raised in the Briefs. Neither is it an
opportunity to merely express disagreement with a decision without setting
forth points believed to have been misapprehended or overlooked.
Arguments not raised in the briefs before the Board and evidence not
previously relied on in the briefs also are not permitted except in the limited
circumstances set forth in § 41.52 (a)(2) though (a)(4). Id.
ANALYSIS
Turning to the Request, Appellant contends our “DECISION failed to
adjudicate or consider whether the claimed invention provides a
technological solution to one or more technological problems, such as shills,
fake ID and bid e-snipping etc., which improves technologies in the online
auction industry for being patent eligible under Prong one of Step 2A.”
Request 2 (citing article by Parsons). Appellant’s contention is unavailing.
The proper analysis under Prong One of Step 2A is to “evaluate
whether the claim recites a judicial exception.” 2019 Revised
Guidance, 84 Fed. Reg. 54. To determine whether a claim recites an
abstract idea in Prong One, we identified the specific limitations in the
claim under examination (individually or in combination) that recite
an abstract idea and determined whether the identified limitations fall
within the subject matter groupings of abstract ideas enumerated in
Section I of the 2019 Revised Guidance. See Decision 5–10. We did
not overlook this argument in our analysis under Prong One of Step
2A. As noted in our Decision, we “considered Appellant’s remaining
arguments, but f[ound] them unpersuasive.” Decision 16; see MPEP
2106.05(a) (“an examiner should evaluate whether a claim contains an
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improvement to the functioning of a computer or to any other
technology or technical field at Step 2A Prong Two and Step 2B”).
On pages 4–8 of the Rehearing Request, Appellant expresses
disagreement with various aspects of our Decision. As discussed, a
Request for Rehearing is not an opportunity to rehash arguments
raised in the Briefs or an opportunity to express disagreement with a
decision. The proper course for an appellant dissatisfied with a Board
decision is to seek judicial review, not to file a request for rehearing to
reargue issues that already have been decided. See 35 U.S.C. §§ 141,
145.
Under Prong Two of Step 2A, Appellant contends that “the
DECISION erred in not recognizing the claim as an ordered
combination when it separated three features from one claim in its
adjudication.” Request 10. We disagree.
Our Decision distinguished the “commitment” and
“recalculation” features from the “allocation” feature, consistent with
Appellant’s Specification under Prong Two. See Decision 12. We
considered claim 43 as a whole under Prong Two of Step 2A
(Decision 13), and under Step 2B found that “[a]s an ordered
combination, the additional elements provide no more than when they
are considered individually” . . . because “[t]hey are used as tools to
implement the judicial exception.” Decision 15. Appellant’s
additional arguments on pages 10–11 of the Request express
disagreement with our opinion without setting forth points believed to
have been misapprehended or overlooked.
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Under Step 2B, Appellant contends: “Nowhere did the
DECISION analyze or even mention that any of the three features
discussed above are well-known, routine or conventional in the
conventional or online auction industry.” Request 12. We disagree
because our Decision identified that “[t]he ‘commitment’ and
‘allocation’ features of ‘receiving, by the auction server, one or more
sets of commitment data’ and ‘transferring for display, on the one or
more remote computing devices’ are each described in the
Specification as being performed by generic and conventional
computing components.” Decision 14. Our Decision also identified
“[t]he ‘automatically re-calculation’ feature of processing data and
carrying out mathematical calculations, ” as demonstrated in the
examples from the Specification as the “‘invocation of already-
available computers that are not themselves plausibly asserted to be an
advance, for use in carrying out improved mathematical calculations,
amounts to a recitation of what is ‘well-understood, routine, [and]
conventional.’” Decision 15 (citing SAP Am., Inc. v. InvestPic, LLC,
898 F.3d 1161, 1170 (Fed. Cir. 2018).
Regarding Appellant’s contention of novelty due to the lack of
prior art rejection on the merits of the claims (Request 12), we note
that (1) “the concept of inventiveness is distinct from that of novelty;”
and (2) “[t]he inventiveness inquiry of [section] 101 should therefore
not be confused with the separate novelty inquiry of [section] 102 or
the obviousness inquiry of § 103.” Amdocs (Israel) Ltd. v. Openet
Telecom, Inc. 841 F.3d 1288, 1311 (Fed. Cir. 2016). Even assuming
that the auction techniques claimed are “[g]roundbreaking, innovative,
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or even brilliant,” that is not enough for eligibility. Association for
Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 591
(2013); accord buySAFE, 765 F.3d at 1352. Nor is it enough for
subject-matter eligibility that claimed techniques be novel and
nonobvious in light of prior art, passing muster under 35 U.S.C. §§
102 and 103. See Mayo Collaborative Servs. v. Prometheus Labs.,
Inc., 566 U.S. 66, 89-90 (2012); Synopsys, Inc. v. Mentor Graphics
Corp., 839 F.3d 1138, 1151 (Fed. Cir. 2016) (“[A] claim for a
new abstract idea is still an abstract idea. The search for a
[section] 101 inventive concept is thus distinct from demonstrating
[section] 102 novelty.”); Intellectual Ventures I LLC v. Symantec
Corp., 838 F.3d 1307, 1315 (Fed. Cir. 2016) (same for obviousness).
Further, Appellant’s disagreement with our Decision argued on pages
13 and 14 of the Request, is unavailing in a Rehearing Request.
Finally, Appellant contends:
The BOARD acknowledged that the Appellant argues all
claims as a group and appeals from the decision rejecting Claims
1 and 119–147, which constitute all pending claims for review,
but held that Claim 133 is representative of the subject matter on
appeal. (see DECISION, pg.5–6). Appellant respectfully
disagrees that Claim 133 is representative thus preclude other
eligibility consideration of at least other dependent claims.
Appellant maintained that limitations of dependent claims bear
also on patent eligibility and never agreed to make Claim 133 as
the sole representative since all of the dependent claims are
properly preserved on appeal. Such as Claims 122
(corresponding method Claim 137, claiming only one valid bid
and one corresponding bid amount would be recognized, (see
Appeal Brief pg. 18). Claim 126 (corresponding method Claim
141, claiming the winning payment amount is higher or lower
than the winning bid amount, see Appeal Brief pg. 7–8) and
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Claim 132 (corresponding method Claim 147, claiming which
bid data accepted or rejected by the computer, (Appeal Brief
pg.18) are separately argued on the Appellant's Brief on Appeal.
There is no rationale that justifies treating Claim 133 as the sole
representative while ignoring the remainder of the dependent
claims without adjudication and explanation for why they are not
patent eligible.
Request 15–16. Appellant is incorrect.
As cited on page 5 of our Decision, 37 C.F.R. § 41.37(c)(1)(iv)
provides:
When multiple claims subject to the same ground of rejection are
argued as a group or subgroup by appellant, the Board may select
a single claim from the group or subgroup and may decide the
appeal as to the ground of rejection with respect to the group or
subgroup on the basis of the selected claim alone. . . the failure
of appellant to separately argue claims which appellant has
grouped together shall constitute a waiver of any argument that
the Board must consider the patentability of any grouped claim
separately. Under each heading identifying the ground of
rejection being contested, any claim(s) argued separately or as a
subgroup shall be argued under a separate subheading that
identifies the claim(s) by number. A statement which merely
points out what a claim recites will not be considered an
argument for separate patentability of the claim.
(Emphases added). Because Appellant argued all the rejected claims
as a group, we properly selected claim 133 from the group and
decided the appeal as to the section 35 U.S.C. § 101 ground of
rejection on the basis of that selected claim.
Regarding the dependent claims, Appellant’s single sentence on
page 18 of the Appeal Brief, which states: “The Appellant further
clarifies that although ‘live auctions’ were mentioned in Appellant’s
Specification, not all of the rules of the claimed invention may apply
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to live auctions; such as verifying the bid amount in a sealed bid
auction such as recited in claims 132 and 147,” is neither an argument
nor argued under a separate subheading, and, is therefore not
considered a proper argument for separate patentability of those
claims. We deny the request to review “all dependent claims”
including those mentioned above because Appellant’s failure to
separately argue those claims constitutes a waiver.
CONCLUSION
Appellant’s Request is denied.
Outcome of Decision on Rehearing:
Claim(s) 35 U.S.C § Reference(s)/Basis Denied Granted
1, 119–147 101 Eligibility 1, 119–147

Final Outcome of Appeal after Rehearing:
Claim(s) 35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 119–147 101 Eligibility 1, 119–147

DENIED