Michael A. Zivin

Patent Trials and Appeals Board

Aug 12, 2019

11729030 - (D) (P.T.A.B. Aug. 12, 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.
11/729,030 03/27/2007 Michael A. Zivin 77483 5422
23432 7590 08/12/2019
COOPER & DUNHAM, LLP
30 Rockefeller Plaza
20th Floor
NEW YORK, NY 10112
EXAMINER
ZUKANOVICH, BRANDY A
ART UNIT PAPER NUMBER
3684
MAIL DATE DELIVERY MODE
08/12/2019 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte MICHAEL A. ZIVIN
____________________

Appeal 2017-011302
Application 11/729,0301
Technology Center 3600
____________________

Before MICHAEL W. KIM, NINA L. MEDLOCK, and
PHILIP J. HOFFMANN, Administrative Patent Judges.

HOFFMANN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant appeals from the
Examiner’s rejection of claims 1, 15–21, and 24–52. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.
According to Appellant, the invention “relates to a method and system
for purchasing services over a general access computer network and, in
particular, to a system and method that incorporates geography and location

1 “Michael A. Zivin is the real party in interest.” Appeal Br. 5.
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into purchasing decisions.” Spec. 1, ll. 7–9. Claims 1, 33, 43, 51, and 52 are
the independent claims on appeal. Below, we reproduce claim 1 as
illustrative of the appealed claims.
1. A method for facilitating a services purchase
transaction, comprising:
storing vendor information, service availability, service
attributes, and service prices for a plurality of vendors in a
database that is a part of a general access computer network;
receiving, over the general access computer network, a
search query for services obtained by at least one user;
performing a search in the database that is part of the
general access computer network for the services obtained by the
at least one user;
displaying search results comprising information
regarding the services obtained by the at least one user on at least
one screen of an electronic device visible to the at least one user,
wherein the at least one electronic device is connected to the
general access computer network;
permitting the at least one user to transmit, over the
general access computer network, information regarding the
services obtained by the at least one user;
updating, in the database that is a part of the general access
computer network, at least the service prices based upon the
information regarding the services obtained by the at least one
user;
receiving, over the general access computer network, a
search query for services desired by a customer;
performing a search for the desired services in the database
that is a part of the general access computer network;
displaying search results with price information on a
screen of an electronic device visible to the customer, wherein
the search results with price information are based upon the
service prices which have been updated based upon the
information regarding the services obtained by the at least one
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user, and wherein the electronic device is connected to the
general access computer network;
receiving confirmation, over the general access computer
network, from the customer as to which of the services the
customer wants to use; and
permitting customers to select vendors from whom they
would like to purchase the services.

REJECTION
The Examiner rejects claims 1, 15–21, and 24–52 as claiming solely
patent in-eligible subject matter.

PRINCIPLES OF LAW CONCERNING 35 U.S.C. § 101
An invention is patent eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101. The
Supreme Court has long interpreted 35 U.S.C. § 101 to include implicit
exceptions, however: “[l]aws of nature, natural phenomena, and abstract
ideas” are not patentable. E.g., Alice Corp. Pty. Ltd. v. CLS Bank Int’l,
573 U.S. 208, 216 (2014) (citation omitted).
In determining whether a claim falls within an excluded category, the
Supreme Court’s two-step framework, described in Mayo and Alice, guides
us. See 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.” Id. 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 in petitioners’
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application explain the basic concept of hedging, or protecting against
risk.”).
Concepts that the courts 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,
561 U.S. at 611); mathematical formulas (Parker v. Flook, 437 U.S. 584,
594–95 (1978)); and mental processes (Gottschalk v. Benson, 409 U.S. 63,
67 (1972)). Concepts that the courts 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. (15 How.) 252, 267–68 (1854))); and
manufacturing flour (Benson, 409 U.S. at 69 (citing Cochrane v. Deener, 94
U.S. 780, 785 (1876))).
In Diehr, although the claim at issue recited a mathematical formula,
the Supreme Court held that “a claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula.” Diehr, 450 U.S. at 187; see also id. at 191 (“We
view respondents’ claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula.”).
Nonetheless, the Supreme Court also indicated that a claim “seeking patent
protection for that formula in the abstract . . . is not accorded the protection
of our patent laws, . . . and this principle cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment.” Id. (citing Benson and Flook); see, e.g., id. at 187 (“It is now
commonplace that an application of a law of nature or mathematical formula
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to a known structure or process may well be deserving of patent
protection.”).
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 (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. (alterations in original) (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.
2019 Revised Patent Subject Matter Eligibility Guidance
The U.S. Patent and Trademark Office recently published revised
guidance on the application of § 101. 2019 Revised Patent Subject Matter
Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Guidance”). 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 i) a fundamental economic
practice, or ii) managing personal behavior or relationships or
interactions between people, or mental processes); and
(2) additional elements that integrate the judicial exception
into a practical application (see MANUAL OF PATENT EXAMINING
PROCEDURE (“MPEP”) § 2106.05(a)–(c), (e)–(h) (9th ed.,
Rev. 08.2017, Jan. 2018)).
A practical application “appl[ies], rel[ies] on, or use[s] the judicial exception
in a manner that imposes a meaningful limit on the judicial exception, such
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that the claim is more than a drafting effort designed to monopolize the
judicial exception.” Guidance, 84 Fed. Reg. at 54.
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 either:
(3) adds a specific limitation beyond the judicial exception
which is not “well-understood, routine, [or] conventional” in the
field (see MPEP § 2106.05(d)); or
(4) simply appends well-understood, routine, and
conventional activities previously known to the industry,
specified at a high level of generality, to the judicial exception.
See generally Guidance.
ANALYSIS
We have carefully reviewed Appellant’s arguments, in the Appeal
Brief and Reply Brief, regarding eligibility for patenting of claims 1, 15–21,
and 24–52. Nonetheless, based on our application of the 2019 Revised
Patent Subject Matter Eligibility Guidance, for the following reasons, we
sustain the Examiner’s rejection of the claims as encompassing solely patent
in-eligible subject matter.
Beginning with independent claim 1, as discussed below, we
determine that in accordance with point (1) of the Guidance referenced
above, claim 1 recites at least one judicial exception, including an abstract
idea. More specifically, as described in further detail, the abstract idea
includes certain methods of organizing human activity, such as a
fundamental economic practice.
As set forth above, independent claim 1 recites the following: (A)
“[a] method for facilitating a services purchase transaction, comprising”: (B)
“storing vendor information, service availability, service attributes, and
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service prices for a plurality of vendors . . .”; (C) “receiving . . . a search
query for services obtained by at least one user”; (D) “performing a
search . . . for the services obtained by the at least one user”;; (E)
“permitting the at least one user to transmit . . . information regarding the
services obtained by the at least one user”; (F) “updating . . . at least the
service prices based upon the information regarding the services obtained by
the at least one user”; (G) “receiving . . . a search query for services desired
by a customer”; (H) “performing a search for the desired services . . .”; (I)
“receiving confirmation . . . from the customer as to which of the services
the customer wants to use”; and (J) “permitting customers to select vendors
from whom they would like to purchase the services.” In accordance with
Appellant’s Specification, the claimed services include automobile repair,
plumbing, gardening, dry cleaning (Spec. 3, ll. 4–6), security monitoring,
pizza delivery (id. at 4, ll. 8–10), legal services (id. at 4, l. 23–5, l. 1), and
yard care and maintenance (id. at 8, ll. 7–8). Claim 1’s preamble (A) and
each of the claim body’s recitations (B)–(J), as set forth above, involve
facilitating purchase of such services. For example, the preamble at (A) is
the literal recitation of facilitating purchase of such services. In another
example, step (C) reads “receiving . . . a search query for services obtained
by at least one user.” In order to facilitate purchasing of such services, there
first must be a query about purchasing those services. In another example,
step (D) recites “performing a search . . . for the services obtained by the at
least one user.” In order to facilitate a purchase of such services,
information for the queried services much be searched for. And purchasing
services such as those listed above is a fundamental economic practice, and,
thus, an abstract idea. See MPEP § 2106.04(a)(2)(I)(A); Alice, 573 U.S.
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at 219–20 (“intermediated settlement” is a fundamental economic practice,
and, thus, an abstract idea); Bilski, 561 U.S. at 611 (“hedging” is a
fundamental economic practice, which is an abstract idea).
In accordance with point (2) of the Guidance referenced above,
claim 1 does not recite any additional element that integrates the judicial
exception into a practical application—i.e., something that “appl[ies],
rel[ies] on, or use[s] the judicial exception in a manner that imposes a
meaningful limit on the judicial exception, such that the claim is more than a
drafting effort designed to monopolize the judicial exception.” Guidance,
84 Fed. Reg. at 54. Specifically, claim 1 only generically recites the use of
certain hardware—“a database that is a part of a general access computer
network,” and a “screen of an electronic device”—and, thus, within the
claim itself the recited hardware does not limit the claim in a meaningful
way. Further, we cannot discern anything in the Specification which
describes the hardware as non-generic, indicating that it is not an
improvement to computer technology, as detailed further below. We also
are unable to identify anything that could be considered a particular machine
or a particular transformation.
Therefore, based on the foregoing, we determine that claim 1 does not
integrate the judicial exception into a practical application, and, thus, is
directed to the abstract idea.
In accordance with points (3) and (4) of the Guidance referenced
above, independent claim 1 fails to recite a specific limitation beyond the
judicial exception which is not well understood, routine, and conventional in
the field, but instead simply appends well-understood, routine, and
conventional activities previously known to the industry, specified at a high
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level of generality, to the judicial exception. Taking the claim elements
separately, the claimed hardware, as well as the functions performed by the
claimed hardware, are purely conventional. Specifically, claim 1 uses
known, generic components, recited at only a high level of generality, to
perform their known, basic functions—e.g., storing information in,
performing a search in, and updating a database; transmitting information
over a general access computer network; and displaying information on an
electronic device’s screen. Thus, the claim recites only well-understood,
routine, and conventional functions. See Elec. Power Grp. v. Alstom S.A.,
830 F.3d 1350, 1353 (Fed. Cir. 2016); see also In re Katz, 639 F.3d 1303,
1316 (Fed. Cir. 2011) (“Absent a possible narrower construction of the terms
‘processing,’ ‘receiving,’ and ‘storing,’ . . . those functions can be achieved
by any general purpose computer without special programming.”).
Considered as an ordered combination, claim 1’s hardware does not
add anything that is not already present when we consider the steps
separately. Appellant compares claim 1 to the claims in McRO, Inc. v.
Bandai Namco Games Am. Inc., 837 F.3d 1299 (Fed. Cir. 2016). See
Appeal Br. 33–39. Unlike the claims in McRO, however, as discussed
above, Appellant’s claim 1 recites the use of only generic hardware.
Appellant argues that Appellant’s “[c]laim 1, as in B[ASCOM],
involves particularly claimed computer-component relationships including a
user-remote component. Claim 1’s relationships represent inventive choices
and tradeoffs (which have not been shown to be conventional, generic,
obvious or anything other than an inventive concept).” Appeal Br. 42
(emphasis omitted). In BASCOM Global Internet Servs. v. AT&T Mobility
LLC, 827 F.3d 1341 (Fed. Cir. 2016), the court acknowledged that “an
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inventive concept can be found in the non-conventional and non-generic
arrangement of known, conventional pieces.” BASCOM, 827 F.3d at 1350.
Specifically, in BASCOM, “[t]he inventive concept described and claimed in
the ’606 patent is the installation of a filtering tool at a specific location,
remote from the end-users, with customizable filtering features specific to
each end user.” Id. Unlike BASCOM’s claims, Appellant’s claim 1 does not
provide a solution to a technological problem. For example, claim 1 does
not recite any improvement in the database, the network, the screen, or the
electronic device. As stated above, the claim recites “a database that is a
part of a general access computer network,” and a “screen of an electronic
device,” which are known, generic components. Further, Appellant’s
claim 1 does not effect an improvement in any other technology or technical
field—instead, claim 1 recites a method of facilitating the purchase of
services, which is itself an abstract idea.
Thus, Appellant’s claim 1 amounts to nothing significantly more than
instructions to apply the abstract idea with generic hardware, and does not
improve the database, network, screen, or electronic device. Accordingly,
the claim recitations are insufficient to transform the abstract idea into a
patent-eligible invention. See Alice, 573 U.S. at 225–26.
Therefore, based on the foregoing, we sustain the Examiner’s § 101
rejection of independent claim 1. Appellant separately argues the patent-
eligibility of each of remaining claims 15–21 and 24–52. Appeal Br. 43–89.
Our analysis is equally applicable to each of these claims, however. For
these reasons, we also sustain the Examiner’s rejection of these claims as
ineligible for patenting.

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DECISION
We AFFIRM the Examiner’s rejection of claims 1, 15–21, and 24–52
as ineligible for patenting.
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).

AFFIRMED