Raise Marketplace Inc.Download PDFPatent Trials and Appeals BoardJun 7, 20212020006706 (P.T.A.B. Jun. 7, 2021) 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. 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). Appeal 2020-006706 Application 15/667,291 2 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)). Appeal 2020-006706 Application 15/667,291 3 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). Appeal 2020-006706 Application 15/667,291 4 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 Appeal 2020-006706 Application 15/667,291 5 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). Appeal 2020-006706 Application 15/667,291 6 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. Appeal 2020-006706 Application 15/667,291 7 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, Appeal 2020-006706 Application 15/667,291 8 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). Appeal 2020-006706 Application 15/667,291 9 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 Appeal 2020-006706 Application 15/667,291 10 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 Appeal 2020-006706 Application 15/667,291 11 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. Appeal 2020-006706 Application 15/667,291 12 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. Appeal 2020-006706 Application 15/667,291 13 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 Appeal 2020-006706 Application 15/667,291 14 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, Appeal 2020-006706 Application 15/667,291 15 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. Appeal 2020-006706 Application 15/667,291 16 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; Appeal 2020-006706 Application 15/667,291 17 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 Appeal 2020-006706 Application 15/667,291 18 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. Appeal 2020-006706 Application 15/667,291 19 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 Appeal 2020-006706 Application 15/667,291 20 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 Appeal 2020-006706 Application 15/667,291 21 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,” Appeal 2020-006706 Application 15/667,291 22 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). Appeal 2020-006706 Application 15/667,291 23 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. Appeal 2020-006706 Application 15/667,291 24 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 Appeal 2020-006706 Application 15/667,291 25 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 Appeal 2020-006706 Application 15/667,291 26 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 Appeal 2020-006706 Application 15/667,291 27 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 Appeal 2020-006706 Application 15/667,291 28 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). Appeal 2020-006706 Application 15/667,291 29 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 Copy with citationCopy as parenthetical citation