Raise Marketplace Inc.

Patent Trials and Appeals Board

Jun 7, 2021

2020006706 (P.T.A.B. Jun. 7, 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.
15/667,291 08/02/2017 Terrence Donnelly Rossi RAIS00060 7025
34399 7590 06/07/2021
GARLICK & MARKISON
100 CONGRESS AVENUE
SUITE 2000
AUSTIN, TX 78701
EXAMINER
KUO, CHENYUH
ART UNIT PAPER NUMBER
3685
NOTIFICATION DATE DELIVERY MODE
06/07/2021 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):
MMurdock@TEXASPATENTS.COM
bpierotti@texaspatents.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte TERRENCE DONNELLY ROSSI, JAMIL A. MERALI, and
DONGWOOK CHUNG
____________

Appeal 2020-006706
Application 15/667,291
Technology Center 3600
____________

Before JOSEPH A. FISCHETTI, JAMES P. CALVE, and
NINA L. MEDLOCK, Administrative Patent Judges.

MEDLOCK, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
final rejection of claims 1–16. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Our decision references Appellant’s Appeal Brief (“Appeal Br.,”
filed June 4, 2020) and the Examiner’s Answer (“Ans.,” mailed July 24,
2020) and Final Office Action (“Final Act.,” mailed March 3, 2020).
Appellant identifies Raise Marketplace, LLC as the real party in interest
(Appeal Br. 2).
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CLAIMED INVENTION
The Specification states, “[t]his invention relates generally to
computer networks and more particularly to an exchange item marketplace
network” (Spec. 1:21–22).
Claims 1 and 9 are the independent claims on appeal. Claim 1,
reproduced below with bracketed notations added, is illustrative of the
claimed subject matter:
1. A method comprises:
[(a)] initiating, by a first computing device of a
computing network, ownership acquisition of a good from a
second computing device of the computing network using a
digital exchange item;
[(b)] determining, by at least one of the second
computing device and a third computing device of the computing
network, whether a first warranty is applicable to the good;
[(c)] when the first warranty is applicable, obtaining, by
at least one of the second computing device and the third
computing device, a representation of the first warranty;
[(d)] executing, by at least one of the second computing
device and the third computing device, the ownership acquisition
of the good by the first computing device using the digital
exchange item, wherein the executing includes updating a digital
chain of custody of the digital exchange item; and
[(e)] further updating, by at least one of the second
computing device and the third computing device, the digital
chain of custody to include affiliation of the first warranty to the
good and to a user of the first computing device.
Appeal Br. 26 (Claims Appendix)).
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REJECTIONS
Claims 1–16 are rejected under 35 U.S.C. § 101 as directed to a
judicial exception without significantly more.
Claims 1–16 are rejected under 35 U.S.C. § 112(a) as failing to
comply with the written description requirement.
Claims 3 and 9–16 are rejected under 35 U.S.C. § 112(b) as indefinite
for failing to particularly point out and distinctly claim the subject matter
that the inventors regard as the invention.2
Claims 9, 10, and 12–16 are rejected under 35 U.S.C. § 102(a)(1) as
anticipated by Shtylman et al. (US 10,229,396 B2, issued Mar. 12, 2019)
(“Shtylman”).
Claims 1–3, 6–11, and 14–16 are rejected under 35 U.S.C. § 103 as
unpatentable over Shtylman and Afshar et al. (US 2016/0275521 A1,
published Sept. 22, 2016) (“Afshar”).
Claims 4, 5, 12, and 13 are rejected under 35 U.S.C. § 103 as
unpatentable over Shtylman, Afshar, and Andreas Antonopoulos,
MASTERING BITCOIN, O’Reilly Media, Inc. (2014) (“Antonopoulos”).
ANALYSIS
Patent-Ineligible Subject Matter
Appellant argues claims 1–16 as a group (Appeal Br. 4–8). We select
independent claim 1 as representative. The remaining claims stand or fall
with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv).

2 The Examiner has withdrawn the rejection of claims 1, 2, and 4–8 under
35 U.S.C. § 112(b) (Ans. 27–28).
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Under 35 U.S.C. § 101, “[w]hoever invents or discovers any new and
useful process, machine, manufacture, or composition of matter, or any new
and useful improvement thereof, may obtain a patent therefor.” 35 U.S.C.
§ 101. The Supreme Court, however, has long interpreted § 101 to include
an implicit exception: “[l]aws of nature, natural phenomena, and abstract
ideas” are not patentable. Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216
(2014).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66 (2012), “for distinguishing patents that claim
laws of nature, natural phenomena, and abstract ideas from those that claim
patent-eligible applications of those concepts.” Alice Corp., 573 U.S. at 217.
The first step in that analysis is to “determine whether the claims at issue are
directed to one of those patent-ineligible concepts.” Id. If the claims are not
directed to a patent-ineligible concept, e.g., an abstract idea, the inquiry
ends. Otherwise, the inquiry proceeds to the second step where the elements
of the claims are considered “individually and ‘as an ordered combination’”
to determine whether there are additional elements that “‘transform the
nature of the claim’ into a patent-eligible application.” Id. (quoting Mayo,
566 U.S. at 79, 78). This is “a search for an ‘inventive concept’ — i.e., 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 concept] itself.’” Id. at 217–18 (alteration in original).
The U.S. Patent and Trademark Office (the “USPTO”) published
revised guidance on January 7, 2019, for use by USPTO personnel in
evaluating subject matter eligibility under 35 U.S.C. § 101. 2019 REVISED
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PATENT SUBJECT MATTER ELIGIBILITY GUIDANCE, 84 Fed. Reg. 50 (Jan. 7,
2019) (the “2019 Revised Guidance”).3 That guidance revised the USPTO’s
examination procedure with respect to the first step of the Mayo/Alice
framework by (1) “[p]roviding groupings of subject matter that [are]
considered an abstract idea”; and (2) clarifying that a claim is not “directed
to” a judicial exception if the judicial exception is integrated into a practical
application of that exception. Id. at 50.
The first step, as set forth in the 2019 Revised Guidance (i.e.,
Step 2A), is, thus, a two-prong test. In Step 2A, Prong One, we look to
whether the claim recites a judicial exception, e.g., one of the following
three groupings of abstract ideas: (1) mathematical concepts; (2) certain
methods of organizing human activity, e.g., fundamental economic
principles or practices, commercial or legal interactions; and (3) mental
processes. 2019 Revised Guidance, 84 Fed. Reg. at 54. If so, we next
determine, in Step 2A, Prong Two, whether the claim as a whole integrates
the recited judicial exception into a practical application, i.e., whether the
additional elements recited in the claim beyond the judicial exception, apply,
rely on, or use 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. Id. at 54–55. Only if
the claim (1) recites a judicial exception and (2) does not integrate that
exception into a practical application do we conclude that the claim is
“directed to” the judicial exception, e.g., an abstract idea. Id.

3 The MANUAL OF PATENT EXAMINING PROCEDURE (“MPEP”) incorporates
the revised guidance and subsequent updates at Section 2106 (9th ed.
Rev. 10.2019, rev. June 2020).
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If the claim is determined to be directed to a judicial exception under
revised Step 2A, we next evaluate the additional elements, individually and
in combination, in Step 2B, to determine whether they provide an inventive
concept, i.e., whether the additional elements or combination of elements
amounts to significantly more than the judicial exception itself; only then, is
the claim patent eligible. 2019 Revised Guidance, 84 Fed. Reg. at 56.
Here, in rejecting the pending claims under 35 U.S.C. § 101, the
Examiner determined that claim 1 recites “making [a] product purchase,
checking and obtaining [a] warranty[,] and completing and recording [the]
purchase transaction,” i.e., a commercial or legal interaction and, therefore,
an abstract idea (Final Act. 18), and that the recited abstract idea is not
integrated into a practical application (id. at 19). The Examiner also
determined that claim 1 does not include additional elements sufficient to
amount to significantly more than the abstract idea itself (id. at 20), and that
the dependent claims are patent ineligible for substantially the same reasons
(id. at 21).4
Step One of the Mayo/Alice Framework (2019 Revised Guidance, Step 2A)
We are not persuaded by Appellant’s argument that the Examiner
erred in determining that claim 1 is directed to an abstract idea (Appeal
Br. 5–8). The Federal Circuit has explained that “the ‘directed to’ inquiry
applies a stage-one filter to claims, considered in light of the specification,
based on whether ‘their character as a whole is directed to excluded subject
matter.’” Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir.
2016) (quoting Internet Patents Corp. v. Active Network, Inc., 790 F.3d

4 The Examiner ostensibly treats claim 1 as representative of the
independent claims.
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1343, 1346 (Fed. Cir. 2015)). It asks whether the focus of the claims is on a
specific improvement in relevant technology or on a process that itself
qualifies as an “abstract idea” for which computers are invoked merely as a
tool. See id. at 1335–36. Here, it is clear from the Specification (including
the claim language) that claim 1 focuses on an abstract idea, and not on an
improvement to technology and/or a technical field.
The Specification is titled “SECURE AFFILIATION OF
WARRANTY TO A GOOD IN A COMPUTING NETWORK,” and
describes, in the Background section, that “[i]t is estimated that billions of
dollars[’] worth of purchased gift cards go unused annually” (Spec. 3:14–
15). Although “this may be a favorable scenario for the branded company, it
is not a favorable scenario for consumers” (id. at 3:15–16).
The claimed invention is ostensibly intended to address this issue by
providing a system and method that enable gift cardholders to sell their
unused or unwanted gift cards in a virtual gift card marketplace
(Spec. 3:17–26). The gift card purchaser may then use the card, i.e., the
digital exchange item, to purchase goods from other third parties
(id. at 85:18–26).
Claim 1, thus, recites a method comprising: (1) initiating, by a first
computing device, the purchase of a good from a second computing device,
using a digital exchange item,5 i.e., “initiating, by a first computing device

5 The Specification describes:
[a]n exchange item is a closed loop financial instrument and/or
other digital goods. For example, a closed loop financial
instrument is a gift card, a voucher, a store credit, and/or other
brand company (or merchant) sponsored form of credit for a
specific use (e.g., in a specific store, in a specific chain of stores,
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of a computing network, ownership acquisition of a good from a second
computing device of the computing network using a digital exchange item”
(step (a)); (2) determining whether a warranty exists for the good and, if so,
obtaining the warranty, i.e., “determining, by at least one of the second
computing device and a third computing device of the computing network,
whether a first warranty is applicable to the good” and “when the first
warranty is applicable, obtaining, by at least one of the second computing
device and the third computing device, a representation of the first warranty”
(steps (b) and (c)); and (3) executing the sale using the digital exchange item
and affiliating the warranty with the good and the first computing device,
i.e.,
executing, by at least one of the second computing device
and the third computing device, the ownership acquisition of the
good by the first computing device using the digital exchange
item, wherein the executing includes updating a digital chain of
custody of the digital exchange item; and
further updating, by at least one of the second computing
device and the third computing device, the digital chain of
custody to include affiliation of the first warranty to the good and
to a user of the first computing device
(steps (d) and (e)). The Examiner determined, and we agree, that these
limitations, when given their broadest reasonable interpretation, recite
initiating a purchase transaction, checking for and obtaining warranty
information, and completing and recording the transaction, i.e., a
commercial or legal interaction, which is one of “[c]ertain methods of

for a particular type of goods, etc.). A closed loop financial
instrument is distinguished from an open loop financial
instrument, such as a credit card
(Spec. 7:30–8:4).
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organizing human activity,” and, therefore, an abstract idea. See
2019 Revised Guidance, 84 Fed. Reg. at 52.
Appellant does not dispute that claim 1 recites an abstract idea.
Instead, Appellant maintains that claim 1 is not directed to an abstract idea
because any alleged abstract idea is integrated into a practical application,
i.e., because claim 1 improves an existing technology (Appeal Br. 5–8).
The 2019 Revised Guidance references MPEP, Ninth Edition
(rev. Jan 2018) (available at https://www.uspto.gov/web/offices/
pac/mpep/old/mpep_E9R08-2017.htm) § 2106.05(a)–(c) and (e) in
non-exhaustively listing considerations indicative that an additional element
or combination of elements may have integrated a recited judicial exception
into a practical application. 2019 Revised Guidance, 84 Fed. Reg. at 55.
In particular, the Guidance describes that an additional element may have
integrated the judicial exception into a practical application if, inter alia,
“[the] additional element reflects an improvement in the functioning of a
computer, or an improvement to other technology or technical field.” Id.
At the same time, the Guidance makes clear that merely including
instructions to implement an abstract idea on a computer, or merely using a
computer as a tool to perform an abstract idea; adding insignificant extra-
solution activity to the judicial exception; or only generally linking the use
of the judicial exception to a particular technological environment or field
are not sufficient to integrate the judicial exception into a practical
application. Id.
Appellant asserts here that “the claims improve warranty registration
in a particular manner by, when a first computing device is acquiring
ownership of a good using a digital exchange item, determining whether any
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warranties are applicable to the good and updating a digital chain of custody
of the digital exchange item to include affiliation of the applicable
warranties to the good and to a user of the first computing device” (Appeal
Br. 6). Appellant maintains that this “increases security, ease of registration,
ease of use, attractiveness of purchase due to ease, among other advantages”
and that it also “decreases fraud and the amount of work a buyer of the good
must perform to register a warranty” (id.). But, we are not persuaded that
updating a digital chain of custody of a digital exchange item to include
affiliation of any applicable warranties to the purchased good and its
purchaser is a technological improvement as opposed to an improvement to
the abstract idea of registering a warranty in the course of a sales transaction,
which is not enough for patent eligibility. See SAP Am., Inc. v. InvestPic,
LLC, 898 F.3d 1161, 1170 (Fed. Cir. 2018) (“[P]atent law does not protect
such claims[, i.e., claims to an asserted advance in the realm of abstract
ideas], without more, no matter how groundbreaking the advance.”). This is
particularly so, where, as here, we find no indication in the Specification that
the operations recited in claim 1 require any specialized computer hardware
or other inventive computer components, invoke any allegedly inventive
programming, or that the claimed invention is implemented using other than
generic computer components as tools operating in their normal and
ordinary capacity.
It also is significant here that the relevant question under Step 2A,
Prong 2 is not whether the claimed invention itself (i.e., determining, when a
user is purchasing a good using a digital exchange item, whether warranties
are applicable to the good, and updating a digital chain of custody of the
digital exchange item to affiliate the applicable warranties to the good and to
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the purchaser) is a practical application; instead, the question is whether the
claim includes additional elements beyond the judicial exception that
integrate the judicial exception into a practical application. The Examiner
determined here, and we agree, that the only additional elements recited in
claim 1 beyond the abstract idea are “a first computing device”; “a second
computing device”; “a third computing device”; “a digital exchange item”;
“a digital chain”; and “a computing network,” i.e., generic computer
components (see, e.g., Final Act. 19; Spec. 7:14–8:4, 10:16–26, 89:7–15).
“And after Alice, there can remain no doubt: recitation of generic computer
limitations does not make an otherwise ineligible claim patent-eligible.”
DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir.
2014).
We also are not persuaded of Examiner error to the extent Appellant
maintains that claim 1 is patent eligible because the claim presents no risk of
preemption (Appeal Br. 8). Although the Supreme Court has described “the
concern that drives [the exclusion of abstract ideas from patent-eligible
subject matter] as one of pre-emption,” Alice Corp., 573 U.S. at 216,
characterizing preemption as a driving concern for patent eligibility is not
the same as characterizing preemption as the sole test for patent eligibility.
“The Supreme Court has made clear that the principle of preemption is the
basis for the judicial exceptions to patentability” and “[f]or this reason,
questions on preemption are inherent in and resolved by the § 101 analysis.”
Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir.
2015) (citing Alice Corp., 573 U.S. at 216). “[P]reemption may signal
patent ineligible subject matter, [but] the absence of complete preemption
does not demonstrate patent eligibility.” Id.
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We conclude, for the reasons outlined above, that claim 1 recites a
method of organizing human activity, i.e., an abstract idea, and that the
additional elements recited in the claim beyond the abstract idea are no more
than generic computer components used as tools to perform the recited
abstract idea. As such, they do not integrate the abstract idea into a practical
application. See Alice Corp., 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
effort designed to monopolize the [abstract idea] itself.’” (quoting Mayo,
566 U.S. at 77)). Accordingly, we agree with the Examiner that claim 1 is
directed to an abstract idea.
Step Two of the Mayo/Alice Framework (2019 Revised Guidance, Step 2B)
Having determined under step one of the Mayo/Alice framework that
claim 1 is directed to an abstract idea, we next consider under Step 2B of the
2019 Revised Guidance, the second step of the Mayo/Alice framework,
whether claim 1 includes additional elements or a combination of elements
that provides an “inventive concept,” i.e., whether an additional element or
combination of elements adds specific limitations beyond the judicial
exception that are not “well-understood, routine, conventional activity” in
the field (which is indicative that an inventive concept is present) or simply
appends well-understood, routine, conventional activities previously known
to the industry to the judicial exception. 2019 Revised Guidance,
84 Fed. Reg. at 56.
We agree with the Examiner that claim 1 does not include additional
elements or a combination of elements that provides an inventive concept
(Final Act. 20). And Appellant presents no arguments to the contrary.
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We are not persuaded, on the present record, that the Examiner erred
in rejecting independent claim 1 under 35 U.S.C. § 101. Therefore, we
sustain the Examiner’s rejection of claim 1, and claims 2–16, which fall with
claim 1.
Written Description
Whether a specification complies with the written description
requirement of 35 U.S.C. § 112(a) is a question of fact and is assessed on a
case-by-case basis. See, e.g., Purdue Pharma L.P. v. Faulding, Inc.,
230 F.3d 1320, 1323 (Fed. Cir. 2000) (citing Vas-Cath, Inc. v. Mahurkar,
935 F.2d 1555, 1561 (Fed. Cir. 1991)). To satisfy the written description
requirement, the specification must describe the claimed invention in
sufficient detail such that one skilled in the art can reasonably conclude that
the inventor had possession of the claimed invention at the time the
application was filed. Vas-Cath, Inc., 935 F.2d at 1562–63. In particular,
the specification must describe the claimed invention in a manner
understandable to a person of ordinary skill in the art and show that the
inventor actually invented the claimed invention. Id.; see also Ariad
Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010).
There is a presumption that an adequate written description of the
claimed invention is present when an application is filed. In re Wertheim,
541 F.2d 257, 263, 191 USPQ 90, 97 (CCPA 1976). As such, original
claims, as part of the original disclosure, can constitute their own written
description of the invention.
The written description requirement, however, applies to all claims,
including original claims that are part of the disclosure as filed. Ariad,
598 F.3d at 1349. Thus, “[a]lthough many original claims will satisfy the
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written description requirement, certain claims may not.” Id. For example,
generic claim language in the original disclosure does not satisfy the written
description requirement if it fails to support the scope of the genus claimed.
Id. at 1350; see also Enzo Biochem, Inc. v. Gen-Probe, Inc., 323 F.3d 956,
968 (Fed. Cir. 2002) (holding that generic claim language appearing in ipsis
verbis in the original specification did not satisfy the written description
requirement because it failed to support the scope of the genus claimed).
Issues of inadequate written description also may arise, even for original
claims, when, for example, an aspect of the claimed invention has not been
described with sufficient particularity such that one skilled in the art would
recognize that the applicant had possession of the claimed invention at the
time of filing.
The Federal Circuit has recognized that determining whether a patent
complies with the written description requirement will necessarily vary
depending on the context, e.g., the nature and scope of the claims and the
complexity and predictability of the relevant technology. Capon v. Eshhar,
418 F.3d 1349, 1357–58 (Fed. Cir. 2005). Thus, in the case of generic
claims, the court has set forth a number of factors for evaluating the
adequacy of the disclosure, including “the existing knowledge in the
particular field, the extent and content of the prior art, the maturity of the
science or technology, [and] the predictability of the aspect at issue.” Id.
at 1359.
Independent Claims 1 and 9 and Dependent Claims 2–8 and 10–16
Executing Ownership Acquisition of the Good
In rejecting independent claims 1 and 9 under 35 U.S.C. § 112(a), the
Examiner noted that each of independent claims 1 and 9 recites “executing,
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by at least one of the second computing device and the third computing
device, the ownership acquisition of the good” (Final Act. 23). And the
Examiner took the position that claims 1 and 9 are properly rejected under
§ 112(a) because “no support can be found in the [S]pecification for the
claim limitation” (id.). The Examiner rejected dependent claims 2–8 and
10–16 based on their respective dependence from independent claims 1 and
9 (id.).
Appellant argues, and we agree, that the Specification provides the
requisite written description support at least at page 88, lines 21–27 and
Figures 8F–8P (Appeal Br. 11). Therefore, we do not sustain the
Examiner’s rejection, under 35 U.S.C. § 112(a), of claims 1–16 on this
basis.6
Digital Exchange Item
Claims 1 and 9 recite, inter alia, that the “executing” step is
performed “using the digital exchange item” and also recite “updating a
digital chain of custody of the digital exchange item” (Appeal Br. 26
(Claims Appendix)). The Examiner additionally rejected claims 1 and 9
(and, therefore, dependent claims 2–8 and 10–16) as failing to comply with
the written description requirement based on the claims’ recitation of a
“digital exchange item,” which the Examiner characterized as a “generic
term” (Final Act. 25).
In setting forth the bases for this rejection, the Examiner variously
explained that the written description requirement is not met as a matter of
law merely because claim language is repeated verbatim in the specification

6 We also note for the record that both claims 1 and 9 are original claims
and, as such, can constitute their own written description of the invention.
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because “even if [the] claim is supported by [the] specification, [the]
language of specification must, to [the] extent possible, describe [the]
claimed invention so that one skilled in art can recognize what is claimed”
(Final Act. 25). But, beyond merely noting that “digital exchange item” is a
generic term, the Examiner does not explain why, or in what way, the
Specification lacks adequate written description support.
We are not persuaded, on the present record, that the Examiner has
overcome the strong presumption that claims possess adequate written
description support, when filed. In re Wertheim, 541 F.2d 257, 263 (CCPA
1976) (“[W]e are of the opinion that the PTO has the initial burden of
presenting evidence or reasons why persons skilled in the art would not
recognize in the disclosure a description of the invention defined by the
claims.”). Therefore, we do not sustain the Examiner’s rejection of
claims 1–16 under 35 U.S.C. § 112(a) on this additional basis.
Dependent Claims 2 and 10
Taking Secure Custody
Claims 2 and 10 depend from independent claims 1 and 9,
respectively. Claim 2 recites:
2. The method of claim 1, wherein the initiating the
ownership acquisition comprises:
sending, by the first computing device, buyer use
information to a server of computing network, wherein the buyer
use information includes information regarding the digital
exchange item, identity of the first computing device, and
identity of the second computing device;
verifying, by the server, the buyer user information via an
exchange item trusted module;
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when the buyer use information is verified, obtaining, by
the server, merchant use information from the second computing
device, wherein the merchant use information includes
information regarding the good, the identity of the first
computing device, and identity of the second computing device;
and
taking, by the server, secure custody of the digital
exchange item.
(Appeal Br. 27 (Claims Appendix) (emphasis added)). Claim 10 includes
substantially similar language (id. at 31–32).
The Examiner rejected claims 2 and 10 under 35 U.S.C. § 112(a) on
the ground that the Specification lacks written description support for
“taking, by the server, secure custody of the digital exchange item,” as
recited in the claims (Final Act. 23–24). The Examiner also determined that
claims 2 and 10 are properly rejected under § 112(a) as failing to disclose an
algorithm for performing the step of “taking, by the server, secure custody”
(id. at 26).
Appellant reproduces the written disclosure, and directs our attention
to page 63, line 10 through page 64, line 3 of the Specification, as providing
the requisite written description support (Appeal Br. 12). Appellant asserts,
“[a]s such, the Applicant believes it is clear what is meant by ‘taking secure
custody’” (id.).
The Federal Circuit has held that the written description requirement
may be satisfied when the particular steps, i.e., an algorithm, necessary to
perform the claimed function, are “described in the specification.” See, e.g.,
In re Hayes Microcomputer Prods., Inc. Patent Litigation, 982 F.2d 1527,
1533-34 (Fed. Cir. 1992). The algorithm may be in the form of a
mathematical formula, in prose, as a flow chart, or in any other manner that
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provides sufficient structure. See Finisar Corp. v. DirecTV Grp., Inc.,
523 F.3d 1323, 1340 (Fed. Cir. 2008).
Here, we agree with Appellant that the Specification provides the
requisite written description support for “taking, by the server, secure
custody,” i.e., that a person of skill in the art would understand from the
Specification, particularly including the disclosure at page 63, line 10
through page 64, line 3 “what is meant by ‘taking secure custody’” (Appeal
Br. 12) and how the step is performed.
Therefore, we do not sustain the Examiner’s rejection of claims 2 and
10 under 35 U.S.C. § 112(a) based on this recitation.
Verifying Buyer User Information
The Examiner additionally rejected claims 2 and 10 on the ground that
the Specification lacks adequate written description support for “verifying,
by the server, the buyer user information via an exchange item trusted
module” (Final Act. 25–26). In doing so, the Examiner observed, “[t]he
claim limitation, ‘an exchange item trusted module[,]’[ ] is a generic term”
(id. at 25).
In much the same manner as described above with respect to claims 1
and 9, the Examiner explained that the written description requirement is not
met merely because claim language is repeated verbatim in the specification
(Final Act. 25). But, other than noting that “an exchange item trusted
module” is a generic term, the Examiner does not explain why, or in what
way, the Specification lacks adequate written description support for the
“verifying” step.
Therefore, we do not sustain the Examiner’s rejection of claims 2 and
10 under 35 U.S.C. § 112(a) on this further basis.
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Dependent Claims 7 and 15
Claim 7 depends from dependent claim 6, which, in turn, depends
from independent claim 1. Claim 6 recites that the method of claim 1 further
comprises “registering, by the second computing device or the third
computing device, the first warranty based on the digital chain of custody of
digital exchange item” (Appeal Br. 29 (Claims Appendix)). And claim 7
recites that the method of claim 6 further comprises “updating, by the second
computing device or the third computing device, the digital chain of custody
of digital exchange item to include one or more of a warranty registration
rebate, a credit, and other bonus in return for registering the first warranty”
(id.). The Examiner rejected claim 7 under § 112(a), finding that the
Specification lacks adequate written description support for this limitation
(Final Act. 24–25).
Claim 15 depends from claim 14, which depends from independent
claim 9, and includes language substantially similar to the language of
claim 7 (Appeal Br. 34 (Claims Appendix)). Claim 15 stands rejected under
§ 112(a) based on the same rationale applied with respect to claim 7 (Final
Act. 24–25).
Appellant does not provide any response to the Examiner’s rejection
of claims 7 and 15 under 35 U.S.C. § 112(a). Therefore, we summarily
sustain the Examiner’s rejection.
Dependent Claim 4
Claim 4 recites:
4. The method of claim 1, wherein the executing the
ownership acquisition of the good comprises:
accessing, by the second computing device or the third
computing device, a first secure data block regarding the first
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computing device having ownership of the digital exchange item,
wherein the first secure data block includes a first secure header
section and a first secure transaction section, wherein the first
secure header section includes encoded information regarding
one or more previous transactions and wherein the first secure
transaction section includes information regarding the first
computing device obtaining ownership of the digital exchange
item that is secured using an encryption key of the first
computing device and is signed by the second computing device
or the third computing device; and
creating, by the second computing device or the third
computing device, a second secure data block regarding
ownership acquisition of the good by the first computing device,
wherein the second secure data block includes a second secure
header section and a second secure transaction section, wherein
the second secure header section includes encoded information
regarding the transaction in which the first computing device
obtained the digital exchange item and wherein the second secure
transaction section includes information regarding the first
computing device acquiring ownership of the good that is
secured using the encryption key of the first computing device
and is signed by the second computing device or the third
computing device, wherein the digital chain of custody of the
digital exchange item includes the first secure data block and the
second secure data block.
Appeal Br. 27–28 (Claims Appendix) (emphasis added)).
In rejecting claim 4 under § 112(a), the Examiner took the position
that the Specification fails to provide details on what “secured using an
encryption key” comprises, i.e., the algorithms or steps/procedures taken to
perform the function (Final Act. 26). We agree with Appellant that the
requisite details are provided in the Specification at least at page 77,
lines 5–13 (Appeal Br. 16).
We also are not persuaded, on the present record, that the Examiner
has overcome the strong presumption that, as an original claim, claim 4
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provides adequate written description support. In re Wertheim, 541 F.2d
at 263. Therefore, we do not sustain the Examiner’s rejection of claim 4
under 35 U.S.C. § 112(a).
Indefiniteness
35 U.S.C. § 112(b) requires that “[t]he specification shall conclude
with one or more claims particularly pointing out and distinctly claiming the
subject matter which the inventor or a joint inventor regards as the
invention.” (Emphasis added). A claim is, thus, properly rejected as
indefinite under § 112(b) if, after applying the broadest reasonable
interpretation in light of the specification, the metes and bounds of the claim
are not clear because the claim “contains words or phrases whose meaning is
unclear.” In re Packard, 751 F.3d 1307, 1310, 1314 (Fed. Cir. 2014);
see also Ex parte McAward, Appeal 2015-006416, 2017 WL 3669566, at *5
(PTAB Aug. 25, 2017) (precedential) (adopting the approach for assessing
indefiniteness approved by the Federal Circuit in Packard).
Language is an imprecise method of drawing boundaries delineating
patent rights; thus, unreasonable precision cannot be demanded. Packard,
751 F.3d at 1313. On the other hand, the claims must notify the public of
what they are excluded from making and using. Id. For this reason,
although exact precision is not required, an applicant is required to use
language as precise as the subject matter reasonably permits. Id.
Dependent Claims 12 and 13
Under 35 U.S.C. § 112, a claim may cover a method of using an
apparatus or the apparatus itself, but not both. IPXL Holdings, LLC v.
Amazon.com, Inc., 430 F.3d 1377, 1384 (Fed. Cir. 2005). Claims drawn to
both a device and a method for using that device, termed “hybrid claims,”
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are, thus, indefinite under § 112(b). Id. (a claim to “both a system and the
method for using that system . . . does not apprise a person of ordinary skill
in the art of its scope, and it is invalid” under 35 U.S.C. § 112(b)); In re Katz
Interactive Call Processing Patent Litig., 639 F.3d 1303, 1318 (Fed. Cir.
2011) (Claims “directed both to systems and to actions performed” by users
of such systems “fall squarely within the rationale of IPXL and are
indefinite.”).
Here, we agree with Appellant that the Examiner erred in rejecting
claims 12 and 13 under 35 U.S.C. § 112(b) as hybrid claims (Appeal Br. 18).
Rather than claiming both a device and a method for using that device,
claims 12 and 13 claim a computer readable memory device that stores
operational instructions that, when executed by a computing device, cause
the computing device to perform certain operations.
Contrary to the Examiner’s finding (Final Act. 28–29), claims 12 and
13 are not hybrid claims. Therefore, we do not sustain the Examiner’s
rejection of claims 12 and 13 as indefinite under 35 U.S.C. § 112(b).
Dependent Claims 3 and 11
Claim 3 depends from independent claim 1 and recites that “the first
warranty includ[es] a basic manufacturer warranty of the good” and that “the
representation of the first warranty includ[es] one or more of a complete
copy of the basic manufacturer warranty, a portion of the basic manufacturer
warranty, and an identifier of the basic manufacturer warranty” (Appeal
Br. 27 (Claims Appendix) (emphasis added)). Claim 11 depends from
claim 9, and includes language substantially similar to the language of
claim 3 (id. at 32).
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In rejecting claims 3 and 11 under 35 U.S.C. § 112(b), the Examiner
determined that the terms “complete” and “basic” are relative terms, which
render the claims indefinite (Final Act. 29). More particularly, the Examiner
determined that “complete” and “basic” are “not defined by the claims; the
specification does not provide a standard for ascertaining the requisite
degree; and one of ordinary skill in the art would not be reasonably apprised
of the scope of the invention” (id.).
The Federal Circuit has held repeatedly that claim language, whose
meaning depends entirely on personal taste or a person’s subjective opinion
without any guidance provided in the claim language or written description,
is indefinite. See, e.g., Sonix Tech. Co. v. Publ’ns Int’l, Ltd., 844 F.3d 1370,
1377–78 (Fed. Cir. 2017); Interval Licensing LLC v. AOL, Inc., 766 F.3d
1364, 1371–72 (Fed. Cir. 2014) (holding the claim phrase “unobstructive
manner” indefinite because the phrase was “purely subjective,” and the
specification failed “to provide the clarity that the subject claim language
needs.”); Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342,
1350–52 (Fed. Cir. 2005) (holding the claim term “aesthetically pleasing,”
which “is completely dependent on a person's subjective opinion,” indefinite
because, even though the preferred embodiment provided “examples of
aesthetic features of screen displays that can be controlled by the authoring
system,” the specification did not indicate “what selection of these features
would be ‘aesthetically pleasing’”). At the same time, the court has
recognized the inherent limitations of language. See, e.g., Packard,
751 F.3d at 1313. Claim language, therefore, is not indefinite where it
provides enough certainty to one of skill in the art when read in the context
of the invention.
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Here, we agree with Appellant that a person of ordinary skill in the art
would reasonably understand from the Specification, including the
discussion at page 86, lines 12–29, what is meant by “a basic manufacturer
warranty” and “a complete copy of basic manufacturer warranty,” as called
for in claims 3 and 11. There, the Specification discusses the various types
of warranties, and distinguishes a “basic warranty” from other types of
warranties, e.g., “secondary warranties,” including extended manufacturer
warranties, retailer service warranties, and third party subscription
warranties.
The Specification, in our view, thus, provides sufficient guidance for
identifying the metes and bounds of the claims. Therefore, we do not sustain
the Examiner’s rejection of claims 3 and 11 under 35 U.S.C. § 112(b).
Independent Claim 9 and Dependent Claims 10–16
Independent claim 9, reproduced below, is directed to a non-transitory
computer readable memory device comprising a first memory section and a
second memory section, and recites that the first and second memory
sections store operational instructions that, when executed, respectively
cause a first computing device and a second or third computing device to
perform certain operations:
9. A non-transitory computer readable memory device
comprises:
a first memory section that stores operational instructions
that, when executed by a first computing device of a computing
network, causes the first computing device to:
initiate ownership acquisition of a good from a
second computing device of the computing network using
a digital exchange item;
a second memory section that stores operational
instructions that, when executed by the second computing device
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or a third computing device of a computing network, causes the
second computing device or the third computing device to:
determine whether a first warranty is applicable to
the good;
when the first warranty is applicable, obtain a
representation of the first warranty;
execute the ownership acquisition of the good by
the first computing device using the digital exchange item,
wherein the executing includes updating a digital chain of
custody of the digital exchange item; and
further update the digital chain of custody to include
affiliation of the first warranty to the good and to a user of
the first computing device.
(Appeal Br. 31 (Claims Appendix)). Claim 10 depends from claim 9, and
recites, inter alia, that the memory device further comprises a third memory
section that stores operational instructions that, when executed by a server,
cause the server to perform certain operations (id. at 31–32).
In rejecting claim 9 under 35 U.S.C. § 112(b), the Examiner took the
position that the claim is indefinite because it is unclear “whether the claim
scope encompasses only the computer readable memory device or whether it
encompasses the first computer device, the second computing device and the
third computing device as well” (Final Act. 29–30). The Examiner rejected
claims 10–16 based on their dependence from claim 9 (id. at 30). The
Examiner also asserted that it is unclear from claims 10, 12, and 14–16
“whether the claim scope encompasses only the computer readable memory
device or whether it encompasses the server, the second computing device
and the third computing device as well” (id.).
We agree with Appellant that a person of ordinary skill in the art
would understand from the Specification, including the claim language, what
is claimed, namely, “a computer readable memory device [that] stores
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operational instructions, [which] when executed by various computing
devices cause the computing devices to perform” certain operations (Appeal
Br. 19). Therefore, we do not sustain the Examiner’s rejection of
claims 9–16 under 35 U.S.C. § 112(b).
Anticipation
We are persuaded that the Examiner erred in rejecting claims 9, 10,
and 12–16 under 35 U.S.C. § 102(a)(1) as anticipated by Shtylman (Appeal
Br. 20–22).
Claim 9, as described above, is directed to a non-transitory computer
readable device comprising a first memory section and a second memory
section, and recites that each of the memory sections stores operational
instructions that, when executed, cause a computing device to perform
certain operations. Claims 10 and 12–16 depend, directly or indirectly, from
claim 9.
In rejecting claim 9 as anticipated by Shtylman, the Examiner
determined that the operational instructions, including the recited steps that
the instructions cause the computing device to perform, are “intended
use/functional language,” which “does not have patentable weight as the
claimed non-transitory computer-readable storage medium merely stores
operational instructions, which is inherent to all computers having a
memory” (Final Act. 31–32). The Examiner, thus, concluded, “as the prior
art[, i.e., Shtylman,] teaches a non-transitory computer-readable storage
medium comprising instructions, when executed . . . , it is sufficient in terms
of art” (id. at 32). We disagree.
In treating the operational instructions in claim 9 as “intended
use/functional language,” the Examiner ostensibly interprets claim 9 as an
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apparatus claim. Yet, a claim, such as claim 9, drafted as “a non-transitory
computer readable memory device” comprising instructions for execution by
a computing device, is, for all intents and purposes, a method claim. Indeed,
the Federal Circuit has held that claims like this are treated as method claims
to avoid exalting form over substance. See, e.g., Digital–Vending Services
Int’l., LLC v. University of Phoenix, Inc., 672 F.3d 1270, 1275 n.1 (Fed. Cir.
2012). Rather than constituting statements of intended use, the recited
operational instructions are instructions stored on a non-transitory storage
device and executable by a computing device to perform the claimed
method.
The Examiner erred in failing to give these method steps patentable
weight. Therefore, on the present record, we do not sustain the Examiner’s
rejection of claims 9, 10, and 12–16 under 35 U.S.C. § 102(a)(1).
Obviousness
Independent Claims 1 and 9 and Dependent Claims 2, 3, 6–8, 10, 11, and
14–16
Appellant summarily asserts that Shtylman, on which the Examiner
relies, “does not teach further updating a digital chain of custody as claimed
in part in claim 1” and that “there is no teach[ing] or suggestion in Shtylman
to further update a digital chain of custody to include affiliation of the first
warranty to the good and the a user of the first computing device” (Appeal
Br. 23). Appellant argues that “the Examiner cites the same portions of
Shtylman to reject the ‘further updating’ limitation as used to reject the . . .
‘wherein the executing includes updating’ limitation, without explicitly
showing how Shtylman is teaching to further update a digital chain of
custody to include affiliation of the first warranty to a good and a user of the
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first computing device,” and that Afshar does not cure these deficiencies (id.
at 23–24). But, Appellant does not address the specific portions of Shtylman
that are the bases for the Examiner’s rejection or otherwise offer any
substantive arguments to rebut the underlying factual findings made by the
Examiner to support the obviousness determination.7
We are not persuaded, on the present record, that the Examiner erred
in rejecting claim 1 under 35 U.S.C. § 103. See In re Jung, 637 F.3d 1356,
1365 (Fed. Cir. 2011) (“[I]t has long been the Board’s practice to require an
applicant to identify the alleged error in the examiner’s rejections.”) (citing
Ex Parte Frye, 94 USPQ2d 1072 (BPAI 2010) (precedential) (“The panel
then reviews the obviousness rejection for error based upon the issues
identified by appellant, and in light of the arguments and evidence produced
thereon.”)). Therefore, we sustain the Examiner’s rejection of claim 1 under
§ 103. We also sustain the Examiner’s rejection of claims 2, 3, 6–11, and
14–16, which are not argued separately.
Dependent Claims 4, 5, 12, and 13
Each of claims 4, 5, 12, and 13 ultimately depends from one of
claims 1 and 9. Appellant does not present any arguments in support of the
patentability of these claims beyond the assertions made with respect to
claim 1. Therefore, we sustain the Examiner’s rejection of claims 4, 5, 12,
and 13 under 35 U.S.C. § 103.

7 In this regard, we are not persuaded by Appellant’s argument that “the
Examiner has failed to provide an informative rejection with a clear
articulation of obviousness” (Appeal Br. 24).
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CONCLUSION
In summary:
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–16 101 Eligibility 1–16
1–16 112(a) Written
Description
7, 15 1–6, 8–14,
16
3, 9–16 112(b) Indefiniteness 3, 9–16
9, 10, 12–
16
102(a)(1) Shtylman 9, 10, 12–
16
1–3, 6–11,
14–16
103 Shtylman, Afshar 1–3, 6–11,
14–16

4, 5, 12, 13 103 Shtylman, Afshar,
Antonopoulos
4, 5, 12, 13
Overall
Outcome
1–16
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED