LISUTO K.K.Download PDFPatent Trials and Appeals BoardMay 4, 20202019004408 (P.T.A.B. May. 4, 2020) 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. 14/632,346 02/26/2015 Nir PLATEK Q218106 3602 23373 7590 05/04/2020 SUGHRUE MION, PLLC 2000 PENNSYLVANIA AVENUE, N.W. SUITE 900 WASHINGTON, DC 20006 EXAMINER GARG, YOGESH C ART UNIT PAPER NUMBER 3625 NOTIFICATION DATE DELIVERY MODE 05/04/2020 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): PPROCESSING@SUGHRUE.COM USPTO@sughrue.com sughrue@sughrue.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte NIR PLATEK ____________ Appeal 2019-004408 Application 14/632,346 Technology Center 3600 ____________ Before TERRENCE W. McMILLIN, KARA L. SZPONDOWSKI, and SCOTT B. HOWARD, Administrative Patent Judges. McMILLIN, Administrative Patent Judge. DECISION ON APPEAL Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s Final Rejection of claims 32–42, which constitute all of the claims pending in this application. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Lisuto, K.K. Appeal Br. 2. Appeal 2019-004408 Application 14/632,346 2 THE CLAIMED INVENTION The present invention relates generally to “computerized systems and methodologies for sales of products.” Spec. ¶ 1. Independent claim 32 is directed to a computerized system for building an automated catalog of non pre-catalogued products having non pre-catalogued parameters. Appeal Br. 15. Claim 32, reproduced below, is representative of the claimed subject matter: 32. A computerized system for building an automated catalog of non pre-catalogued products having non pre-catalogued parameters, the system comprising: a non pre-catalogued product database including: a product parameter table including selectable parameters; and a product parameter value table including selectable values corresponding to said parameters; and at least one server computer connected to said non pre- catalogued product database, said at least one server computer including: a non pre-catalogued product listing engine configured to prompt a user to select in a structured manner at least one of said parameters relating to a product to be listed and to select at least one of said values corresponding to said selected parameters and to store selected ones of said parameters and selected ones of said values corresponding to said selected parameters in said non pre-catalogued product database to create a listed product; and a non pre-catalogued product description engine configured to provide for each said listed product, human- readable descriptions of said selected non pre-catalogued parameters and corresponding selected non pre- Appeal 2019-004408 Application 14/632,346 3 catalogued values, said human readable descriptions corresponding to selections of said non pre-catalogued parameters and values made by said user. REJECTIONS ON APPEAL Claims 32–42 stand rejected under 35 U.S.C. § 101 as directed to patent ineligible subject matter. Final Act. 7. Claims 32–42 stand rejected under 35 U.S.C. § 102(b) as anticipated by Amazon.com, Inc. (WO 03/038560 A2; published May 8, 2003) (“Amazon”). Final Act. 10. ANALYSIS 35 U.S.C. § 101 Rejection An invention is patent eligible if it claims a “new and useful process, machine, manufacture, or composition of matter.” 35 U.S.C. § 101. However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include implicit exceptions: “[l]aws of nature, natural phenomena, and abstract ideas” are not patentable. E.g., Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014). In determining whether a claim falls within an excluded category, we are guided by the Supreme Court’s two-step framework, described in Mayo and Alice. Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with that framework, we first determine what concept the claim is “directed to.” See Alice, 573 U.S. at 219 (“On their face, the claims before us are drawn to the concept of intermediated settlement, i.e., the use of a third party to mitigate settlement risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4 Appeal 2019-004408 Application 14/632,346 4 in petitioners’ application explain the basic concept of hedging, or protecting against risk . . . .”). Concepts determined to be abstract ideas, and, thus, patent ineligible, include certain methods of organizing human activity, such as fundamental economic practices (Alice, 573 U.S. at 219–20; Bilski v. Kappos, 561 U.S. 593, 611 (2010)); mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and mental processes (Gottschalk v. Benson, 409 U.S. 63, 69 (1972)). Concepts determined to be patent eligible include physical and chemical processes, such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191 (1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S. 252, 267–68 (1853))); and manufacturing flour (Benson, 409 U.S. at 69 (citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))). If the claim is “directed to” an abstract idea, we turn to the second step of the Alice and Mayo framework, where “we must examine the elements of the claim to determine whether it contains an ‘inventive concept’ sufficient to ‘transform’ the claimed abstract idea into a patent- eligible application.” Alice, 573 U.S. at 221 (internal citation omitted). “A claim that recites an abstract idea must include ‘additional features’ to ensure ‘that the [claim] is more than a drafting effort designed to monopolize the [abstract idea].’” Id. (quoting Mayo, 566 U.S. at 77). “[M]erely requir[ing] generic computer implementation[] fail[s] to transform that abstract idea into a patent-eligible invention.” Id. The PTO has published guidance on the application of § 101. USPTO’s January 7, 2019 Memorandum, 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) Appeal 2019-004408 Application 14/632,346 5 (“Memorandum”).2 Under that guidance, we first look to whether the claim recites: (1) any judicial exceptions, including certain groupings of abstract ideas (i.e., mathematical concepts, certain methods of organizing human activity such as a fundamental economic practice, or mental processes); and (2) additional elements that integrate the judicial exception into a practical application (see MPEP § 2106.05(a)–(c), (e)–(h) (9th ed. rev. 08.2017, Jan. 2018)). See Memorandum, 84 Fed. Reg. at 52, 54–55. Only if a claim (1) recites a judicial exception and (2) does not integrate that exception into a practical application, do we then look to whether the claim: (3) adds a specific limitation beyond the judicial exception that is not “well-understood, routine, conventional” in the field (see MPEP § 2106.05(d)); or (4) simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. See id. at 56. USPTO Memorandum, Step 2A, Prong 1 Under the first step of the Alice/Mayo framework, the Examiner concludes that the claims are directed to “an abstract idea of helping a user for listing items for sale in a catalog format by enabling a user selecting one or more parameters and values against the selected parameters and other 2 In response to received public comments, the Office issued further guidance on October 17, 2019, clarifying the 2019 Revised Guidance. USPTO, October 2019 Update: Subject Matter Eligibility, 84 Fed. Reg. 55942 (the “October 2019 Update”) (available at https://www.uspto.gov/ sites/default/files/documents/peg_oct_2019_update.pdf). Appeal 2019-004408 Application 14/632,346 6 relevant description related to the items to be listed for sale,” which “represents a plan or scheme which can be a result of mental thought process or a manual activity using pen and paper.” Final Act. 8; see Ans. 8. Appellant does not persuasively rebut the Examiner’s determination that the claims are directed to an abstract idea. Specifically, Appellant has not persuasively argued why the claim limitations cannot be practically performed by a human, either mentally, manually, or with the use of pen and paper. See, e.g., CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1373 (Fed. Cir. 2011); Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1318 (Fed. Cir. 2016); Bancorp Servs., L.L.C. v. Sun Life Assur. Co. of Can. (U.S.), 687 F.3d 1266, 1279 (Fed. Cir. 2012). For example, claim 32 recites prompt[ing] a user to select in a structured manner at least one of said parameters relating to a product to be listed and to select at least one of said values corresponding to said selected parameters and . . . stor[ing] selected ones of said parameters and selected ones of said values corresponding to said selected parameters . . . to create a listed product; and . . . provid[ing] for each said listed product, human-readable descriptions of said selected non pre- catalogued parameters and corresponding selected non pre- catalogued values, said human readable descriptions corresponding to selections of said non pre-catalogued parameters and values made by said user. Appeal Br. 15. A person can manually prompt a user to select parameters relating to a product to be listed and select corresponding values (e.g., provide a form to list a product), create a listed product with the selected parameters and values (e.g., print a product listing or catalog), and provide human-readable descriptions of non pre-catalogued parameters corresponding to non pre-catalogued values (e.g., print a product listing catalog with readable descriptions). Appeal 2019-004408 Application 14/632,346 7 Accordingly, we conclude claim 32 recites a mental process as identified in the Memorandum, and thus an abstract idea. USPTO Memorandum, Step 2A, Prong 2 In determining whether claim 32 is “directed to” the identified abstract idea, we next consider whether the claims recite additional elements that integrate the judicial exception into a practical application. For the reasons set forth below, we discern no additional element (or combination of elements) recited in claim 32 that integrates the judicial exception into a practical application. See Memorandum, 84 Fed. Reg. at 54–55. Appellant argues that the claimed invention “is specifically designed to solve a specific problem – of how to describe a non pre-catalogued product – that arises from the use of interconnected computers in communication information from one user to another user via a server,” which is a technological solution to a technical problem arising from the use of computers. Appeal Br. 14 (citing Amdocs (Israel) Limited v. Openet Telecom, Inc., 841 F.3d 1288 (Fed. Cir. 2016)). We are not persuaded by Appellant’s arguments. Rather, we agree with the Examiner that the “concept of helping a user of building a catalog of items for intended purpose of sale in the instant application, can be implemented manually as well as alternatively by using a generic computer as a mere tool to automate the manual activity.” Ans. 8. As the Examiner properly reasons, the claimed invention “does not provide any technical improvement or technological solution to a technical problem in the operation of a computer or a computer network or computer-related technology by allowing computer performance of a function not previously performable by a computer.” Final Act. 9; see Ans. 9–10. The Examiner Appeal 2019-004408 Application 14/632,346 8 finds, and we agree, that the claimed “use of computer limitations are simply a field of use that is an attempt to limit the abstract idea to a particular technological environment.” Id. In Amdocs, our reviewing court found the claim eligible because it entailed “an unconventional technological solution (enhancing data in a distributed fashion) to a technological problem (massive record flows which previously required massive databases)” and the requirement of generic components was such that “these generic components operate in an unconventional manner to achieve an improvement in computer functionality.” Amdocs, 841 F.3d at 1300–01. Here, Appellant characterizes the claims as enabling a customer to “describe a non pre-catalogued product.” Appeal Br. 14. According to Appellant, the problem of describing a non pre-catalogued product arises “from the use of interconnected computers in communication information from one user to another user via a server.” Id. However, Appellant has not shown how providing human-readable descriptions for user-selected parameters and associated values for non pre-catalogued products improves the functionality of the computer itself. For example, using a computer to provide a human-readable description for a non pre-catalogued product merely automates what a human being would do in creating a catalog to include a non pre-catalogued product description. Accordingly, for the foregoing reasons, the claims fail to integrate the abstract mental process into a practical application. USPTO Memorandum, Step 2B Turning to step 2 of the Alice/Mayo framework, we look to whether the claims (a) add a specific limitation or combination of limitations that are Appeal 2019-004408 Application 14/632,346 9 not well-understood, routine, conventional activity in the field, or (b) simply append well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. Memorandum, 84 Fed. Reg. at 56. The Examiner further finds that the claimed “providing human- readable descriptions of said selected non pre-catalogued parameters and corresponding selected non pre-catalogued values, and organizing a display of the created catalog listing to a customer, all represent ‘well-understood, routine, and conventional activity.’” Final Act. 9; see Ans. 8. The Examiner further concludes that the claims provide a “business solution related to helping a user and organizing items in a catalog format and using generic computers as merely tools for implementing an abstract idea.” Ans. 12. Appellant has not responded to the Examiner’s determination that the present claimed invention uses generic computers to perform well- understood, routine, and conventional activities that provide a business solution to help a seller list items for sale in a catalog rather than a technological solution to a technological problem. We agree with the Examiner and adopt the Examiner’s findings. The recited “database” conventionally includes tables with parameters and values and the recited “server computer” conventionally includes “engine[s]” for providing an interface to the user. Given the claimed generic computer- system components that perform generic computer functions, we conclude that the combination of limitations in each independent claim does not supply an “inventive concept” that renders the claim “significantly more” than an abstract idea. Thus, each claim does not satisfy § 101 under Mayo/Alice step two. Appeal 2019-004408 Application 14/632,346 10 Accordingly, we sustain the Examiner’s 35 U.S.C. § 101 rejection of independent claim 32, as well as dependent claims 33–42, not separately argued. 35 U.S.C. § 102(b) Rejection Claim 32 recites “a non pre-catalogued product listing engine” and “a non pre-catalogued product description engine.” Appellant contends Amazon’s “computerized system for sale of pre-catalogued products” does not teach or suggest “a computerized system for sale of non pre-catalogued products.” Appeal Br. 11. According to Appellant, Amazon’s description of a browsable detail page for a product, and the seller fully identifying the product to be listed by browsing the detail page, as well as the lack of need for the seller to supply a detailed product description, does “not show or suggest either a non pre- catalogued product database, a non pre-catalogued product listing engine or a non pre-catalogued product description engine.” Appeal Br. 11–12. We are not persuaded of Examiner error. Specifically, we agree with the Examiner’s finding that Amazon’s listing seller being prompted to select parameters with a corresponding value such as “[U]sed---Like New” and the value being stored for displaying to a customer describes the claimed “non pre-catalogued product listing engine,” and Amazon’s prompting a seller to enter a human readable description corresponding to selecting parameters and values such as “got this gift 3 months ago” or “Dust cover missing” describes the claimed “non pre-catalogued product description engine.” See Final Act. 10–11 (citing Amazon Fig. 3C, 3D). The claims do not provide any limiting definition for non Appeal 2019-004408 Application 14/632,346 11 pre-catalogued products having “non pre-catalogued parameters,” “a non pre-catalogued product listing engine,” or “a non pre-catalogued product description engine.” Appellant’s Specification provides examples describing “the non pre-catalogued parameters, which are not available in existing catalogs, including, inter alia, the non-inherent parameters relating, for example to the current condition of the product, for how many years it has been in use and the presence of scratches, dents or other defects.” Spec. ¶ 37. The claimed non pre-catalogued products with “non pre-catalogued parameters,” and associated “non pre-catalogued product listing engine” and “non pre-catalogued product description engine,” in light of the Specification, encompass products with parameters including current condition of the product. Amazon describes the “condition page 330 restates the product to be listed for sale, and prompts the seller to select from a list 345 of predefined product condition descriptors,” and the “comment 352 may be used to further specify the item’s condition.” Amazon 21, ll. 10–12, 22–23. In other words, as found by the Examiner, Amazon’s parameters, including “the current condition of the product, for how many years it has been in use and the presence of scratches, dents or other defects,” describes non pre- catalogued parameters as defined in Appellant’s Specification. Ans. 4; see Ans. 5–6. Therefore, Appellant has not provided persuasive evidence or argument that the claimed non pre-catalogued products and parameters, encompassing products with parameters including the current condition of the product, is not described by Amazon’s products with parameters including the current condition of the product. Appeal 2019-004408 Application 14/632,346 12 Accordingly, we sustain the 35 U.S.C. § 102(b) rejection of independent claim 32, as well as dependent claims 33–42, not separately argued. CONCLUSION The Examiner’s rejection of claims 32–42 under 35 U.S.C. § 101 is affirmed. The Examiner’s rejection of claims 32–42 under 35 U.S.C. § 102(b) is affirmed. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 32–42 101 Eligibility 32–42 32–42 102 Amazon 32–42 Overall Outcome 32–42 TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). See 37 C.F.R. § 41.50(f). AFFIRMED Copy with citationCopy as parenthetical citation