Rachel Marie. KumarDownload PDFPatent Trials and Appeals BoardSep 30, 201914094441 - (D) (P.T.A.B. Sep. 30, 2019) 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. 14/094,441 12/02/2013 Rachel Marie Kumar 2043.379US2 8028 49845 7590 09/30/2019 SCHWEGMAN LUNDBERG & WOESSNER/EBAY P.O. BOX 2938 MINNEAPOLIS, MN 55402 EXAMINER CHEN, GEORGE YUNG CHIEH ART UNIT PAPER NUMBER 3628 NOTIFICATION DATE DELIVERY MODE 09/30/2019 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): SLW@blackhillsip.com USPTO@SLWIP.COM PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ________________ Ex parte RACHEL MARIE KUMAR ________________ Appeal 2018-009210 Application 14/094,4411 Technology Center 3600 ________________ Before JAMES R. HUGHES, LINZY T. McCARTNEY, and JASON J. CHUNG, Administrative Patent Judges. CHUNG, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal under 35 U.S.C. § 134(a) of the Final Rejection of claims 1–20. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. INVENTION The invention relates to providing a seller in a network-based shopping system with shipping data that preserves private information associated with a buyer. Spec. ¶ 2. Claim 1 is illustrative of the invention and is reproduced below with emphases discussed infra in § I.C.1.: 1. A method, including: extracting, by a processor of a server, shipping data and a shipping preference including a shipping service provider preference from a user record maintained in a database of the server for a first party; 1 According to Appellant, eBay Inc. is the real party in interest. Br. 2. Appeal 2018-009210 Application 14/094,441 2 encoding, by the server, the shipping data associated with the first party to create an encoded identifier, the shipping data being associated with a transaction between the first party and a second party; generating, by the server, an encoded shipping label using the encoded identifier; providing, by the server, the encoded shipping label and the extracted shipping service provider preference to the second party, the encoded shipping label, when decoded, providing the shipping data of the first party; processing a login, via a web client, from a shipping service provider corresponding to the extracted shipping service provider preference; and in response to the login via the web client, processing a request from the shipping service provider to decode the encoded shipping label. App. Br. 20 (Claims Appendix) (emphases added). REJECTION AT ISSUE Claims 1–20 stand rejected under 35 U.S.C. § 101 as being directed to patent ineligible subject matter. Final Act. 2–4. Claims 1–20 stand rejected under a non-statutory obviousness-type double patenting rejection over the combination of claims 1–15 of Kumar (US 8,600,902 B2; filed Dec. 20, 2006) and Bansal (US 7,254,549 B1; filed July 23, 2001). Final Act. 4–6. ANALYSIS I. Claims 1–20 Rejected Under 35 U.S.C. § 101 A. Legal Principles 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 Appeal 2018-009210 Application 14/094,441 3 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 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, 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, 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. (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, the claim at issue recited a mathematical formula, but the Supreme Court held that “[a] claim drawn to subject matter otherwise Appeal 2018-009210 Application 14/094,441 4 statutory does not become nonstatutory simply because it uses a mathematical formula.” Diehr, 450 U.S. at 187; see also id. at 192 (“We view respondents’ claims as nothing more than a process for molding rubber products and not as an attempt to patent a mathematical formula.”). Having said that, 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 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 (quotation marks 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 recently published revised guidance on the application of § 101. USPTO’s January 7, 2019 Memorandum, 2019 Revised Patent Subject Matter Eligibility Guidance (“Memorandum”). Under that guidance, we first look to whether the claim recites: Appeal 2018-009210 Application 14/094,441 5 (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)). 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 are 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 Memorandum. B. The Examiner’s Conclusions and Appellant’s Arguments The Examiner concludes the present claims recite gathering information, generating an identifier, generating and providing a shipping label. Final Act. 2. The Examiner also determines the present claims do not amount to significantly more than an abstract idea itself because the Examiner determines the abstract idea is implemented on generic components that are previously known to the industry, well-understood, routine, and conventional. Ans. 3, 5, 6, 8 (citing Spec. ¶¶ 38–39). Appellant argues that label generation cannot be abstract because a physical object is created. Br. 8–9. Appellant argues that, similar to the patent eligible claims of Research Corp. Techologies, Inc. v. Microsoft Appeal 2018-009210 Application 14/094,441 6 Corp., 627 F.3d 859 (Fed. Cir. 2010), the present claims are encoding data. Br. 15. Appellant further argues, similar to DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014), the present claims are necessarily rooted in computer technology to solve problems specifically arising in the realm of computer networks such as protecting personal data involving networked-based transactions. Br. 12–14. Appellant argues, similar to BASCOM Global Internet Services, Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016), the present claims recite a combination of non-conventional and non-generic arrangement of known, conventional elements, which results in an inventive concept. Br. 17–18.2 We disagree with Appellant. C. Discussion 1. Step 2A, Prong 1 Patent eligibility under 35 U.S.C. § 101 is a question of law that is reviewable de novo. See Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1333 (Fed. Cir. 2012). We are aware of no controlling authority that requires the Examiner to provide factual evidence under step one of the Alice framework to support a determination that a claim is directed to an abstract idea. The emphasized portions of claim 1,3 reproduced above (see supra at 1–2), recite commercial transactions including business relations because the 2 Appellant’s argument pertaining to Return Mail, Inc. v. United States Postal Service, 868 F.3d 1350 (Fed. Cir. 2017) is moot because we do not rely on this case to reach our Decision. 3 Claim 1, reproduced above with emphasis, recites similar features as independent claims 9 and 16. Appellant does not argue claims 2–20 separately. Br. 7–14. We, therefore, group claims 1–20 together and refer to claims 1–20 as the “present claims.” Appeal 2018-009210 Application 14/094,441 7 claims protect the personal information of one of the parties involved in the business transaction by encoding shipping data on a shipping label. According to the Memorandum, commercial transactions including business relations fall into the category of certain methods of organizing human activity. See Memorandum. Moreover, those certain methods of organizing human activity are a type of an abstract idea. See id.4 We, therefore, disagree with Appellant’s argument that label generation cannot be abstract because a physical object is created (Br. 8–9) for at least the reasons discussed above. Because the present claims recite commercial transactions including business relations that fall into the category of certain methods of organizing human activity (i.e., an abstract idea), we proceed to prong 2. 2. Step 2A, Prong 2 The present claims do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. Unlike the claims of Research Corporation Technologies, the present claims are not directed to applying a blue noise mask to an image. Research Corp. Techs., Inc. v. Microsoft Corp., 627 F.3d at 863. In addition, we disagree with Appellant’s argument that, similar to DDR, the present claims are necessarily rooted in computer technology to 4 Additionally, the extracting, generating, and encoding steps of the claim 1 reproduced above (see supra at 1–2), recite concepts performed in the human mind because they can be performed using pen and paper. According to the Memorandum, concepts performed in the human mind fall into the category of mental processes. See Memorandum. Moreover, those mental processes are a type of an abstract idea. See id. Appeal 2018-009210 Application 14/094,441 8 solve problems specifically arising in the realm of computer networks such as protecting personal data involving networked-based transactions. Br. 12– 14. Instead, the present claims are directed to an abstract idea using additional generic elements as tools to implement the abstract idea as discussed supra in § I.C.1. or at best, the present claims are rooted in commercial transactions technologies including business relations technologies and overcoming a problem arising in those areas. The Specification indicates the additional elements (i.e., “processor,” “database,” “server,” “web client,” “memory,”5 and “hardware processor”6) recited in the present claims are merely tools used to implement the abstract idea. Spec. ¶¶ 13–15, 31, 35, 41, 49–50. Additionally, “a claim for a new abstract idea is still an abstract idea.” Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir. 2016). “[U]nder the Mayo/Alice framework, a claim directed to a newly discovered law of nature (or natural phenomenon or abstract idea) cannot rely on the novelty of that discovery for the inventive concept necessary for patent eligibility . . . .” Genetic Techs. Ltd. v. Merial L.L.C., 818 F.3d 1369, 1376 (Fed. Cir. 2016) (citations omitted). Appellant does not make any other arguments pertaining to step 2A, prong 2. Because the present claims recite an abstract idea that is not integrated into a practical application, we proceed to Step 2B. 5 Claim 9 recites this feature, whereas claims 1 and 16 does not. 6 Claim 9 recites “hardware processor,” whereas claims 1 and 16 recite “processor” by itself. Appeal 2018-009210 Application 14/094,441 9 3. Step 2B We agree with the Examiner’s determination that the abstract idea is implemented on generic components that are well-understood, routine, and conventional. Ans. 3, 5, 6, 8 (citing Spec. ¶¶ 38–39). The Specification supports the Examiner’s determination in this regard because it explains that “processor,” “database,” “server,” “web client,” “memory,” and “hardware processor” are generic components. Spec. ¶¶ 13–15, 31, 35, 41, 49–50. Appellant’s Specification indicates these elements were well-understood, routine, and conventional components because it describes them at a high level of generality and in a manner that indicates that they are sufficiently well-known. Id.; USPTO Berkheimer Memorandum (USPTO Commissioner for Patents Memorandum dated Apr. 9, 2018, “Changes in Examination Procedure Pertaining to Subject Matter Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v. HP, Inc.).” We disagree with Appellant’s argument that, like BASCOM, the present claims recite a combination of non-conventional and non-generic arrangement of known, conventional elements, which results in an inventive concept. Br. 17–18. Instead, the present claims are directed to an abstract idea using generic components as discussed supra, in §§ I.C.1. and I.C.2. or at best, improving an abstract idea—not an inventive concept. Appellant does not argue claims 2–20 separately, but assert the § 101 rejection of those claims should be withdrawn for at least the same reasons as argued for independent claim 1. Br. 7–14. Based on our review of the dependent claims, these claims do not recite any additional features that would transform the abstract idea embodied in claims 1, 9, and 16 into an inventive concept. Dependent claims that merely narrow an abstract idea Appeal 2018-009210 Application 14/094,441 10 “add nothing outside the abstract realm.” SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1169 (Fed. Cir. 2018). Accordingly, we sustain the Examiner’s rejection of: (1) independent claims 1, 9, and 16; and (2) dependent claims 2–8, 10–15, and 17–20 under 35 U.S.C. § 101. II. Claims 1–20 Rejected Under a Non-Statutory Obviousness-Type Double Patenting Rejection The Examiner rejects claims 1–20 under the judicially-created doctrine of non-statutory obviousness-type double patenting over the combination of Kumar and Bansal. Final Act. 4–6. Appellant does not proffer any arguments. We, therefore, summarily sustain the Examiner’s rejection of claims 1–20. See 37 C.F.R. § 41.39(a)(1). We have only considered those arguments that Appellant actually raised in the Brief. Arguments Appellant could have made, but chose not to make, in the Brief has not been considered and are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(iv). DECISION We affirm the Examiner’s decision rejecting claims 1–20 under 35 U.S.C. § 101. We summarily affirm the Examiner’s decision rejecting claims 1–20 under a non-statutory obviousness-type double patenting rejection. 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 Copy with citationCopy as parenthetical citation