ReplyBuy, Inc.Download PDFPatent Trials and Appeals BoardMay 28, 20212020005503 (P.T.A.B. May. 28, 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. 15/288,159 10/07/2016 Anthony Saia 32132-47788/US 5019 758 7590 05/28/2021 FENWICK & WEST LLP SILICON VALLEY CENTER 801 CALIFORNIA STREET MOUNTAIN VIEW, CA 94041 EXAMINER BARGEON, BRITTANY E ART UNIT PAPER NUMBER 3684 NOTIFICATION DATE DELIVERY MODE 05/28/2021 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): PTOC@Fenwick.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte ANTHONY SAIA and JOSHUA MANLEY Appeal 2020-005503 Application 15/288,159 Technology Center 3600 ____________ Before JOSEPH A. FISCHETTI, NINA L. MEDLOCK, and CYNTHIA L. MURPHY, Administrative Patent Judges. MURPHY, Administrative Patent Judge. DECISION ON APPEAL The Appellant1 appeals from the Examiner’s rejections of claims 1–20 under 35 U.S.C. § 101 (Rejection I), 35 U.S.C. § 103 (Rejections II and III), and 35 U.S.C. §112 (Rejection IV). We sustain all four of the Examiner’s rejections, and, therefore, we AFFIRM.2 1 The Appellant is the “applicant” as defined by 37 C.F.R. § 1.42 (e.g., “the inventor or all of the joint inventors”). “The real party in interest in this appeal is the assignee of this application, Reply Buy, Inc.” (Appeal Br. 1.) 2 We have jurisdiction under 35 U.S.C. §§ 6(b) and 134(a). Appeal 2020-005503 Application 15/288,159 2 THE APPELLANT’S INVENTION The Appellant discloses a system for “fulfilling purchase requests.” (Spec. ¶ 2.) The problem addressed by the Appellant is that consumers “sometimes make requests that go unfulfilled” because “inventory is unavailable” from a vendor. (Spec. ¶ 23.) With the Appellant’s system, the consumer provides follow-up information so that he/she can be “later contacted.” (Id. ¶ 38.) “[T]he system monitors the inventory of the vendor” so as to “keep track of what inventory becomes available at different times” and “attempts to match up” the not-yet-fulfilled consumer request with “later available inventory.” (Id. ¶ 40.) “If a match is made,” the consumer is notified via his/her previously provided contact information. (Id.) This commercial interaction is “beneficial for all parties involved” because the vendor “sells more product,” and the consumer “receives the desired request.” (Id. ¶ 23.) ILLUSTRATIVE CLAIM 1. An apparatus, comprising: an order fulfillment system that has an interface that receives a request for an item by a computing device being used by a consumer, the item being unavailable for purchase at a time of the request for the item, the request for the item including contact details for the consumer and an interface that receives information, for the item unavailable for purchase at the time of the request for the item, about an availability of the item unavailable for purchase at the time of the request for the item from a vendor system at a time later than the time of the request; the order fulfillment system having a matching system that matches the received request for the item from the consumer with the availability for the requested item from the Appeal 2020-005503 Application 15/288,159 3 vendor system at the later time to identify that the requested item is available for purchase by the consumer; and the order fulfillment system having an alerting system that electronically alerts the consumer, using the contact details of the received request from the consumer, that the requested item is available for purchase. REJECTION I The Examiner rejects claims 1–20 under 35 U.S.C. § 101 as directed to an abstract idea without significantly more. (Non-Final Action 7.) To wit, the Examiner concludes that the claims on appeal do not satisfy the Alice framework for patent eligibility. The Alice Framework In Alice Corp. v. CLS Bank Int’l, 573 U.S. 208 (2014), the Supreme Court imparted a two-step framework to detect when an attempt is being made to patent an abstract idea in isolation. (Id. at 217–18.) In the first step of the Alice framework, a determination is made as to whether the claim at issue is “directed to” an abstract idea. (Id. at 218.) In the second step of the Alice framework, a determination is made as to whether “additional elements” in the claim, both individually and as an ordered combination, contribute “significantly more” than the abstract idea. (Id.) The 2019 § 101 Guidance The 2019 Revised Patent Subject Matter Eligibility Guidance (“2019 § 101 Guidance”) provides specific steps for discerning whether a claim satisfies the Alice framework for patent eligibility. (See 2019 Revised Patent Appeal 2020-005503 Application 15/288,159 4 Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019).)3 These steps are “[i]n accordance with judicial precedent” and consist of a two-pronged Step 2A and a Step 2B. (Id. at 52.) In the first prong of Step 2A (Prong One), a determination is made as to whether the claim “recites” an abstract idea. (2019 § 101 Guidance, 84 Fed. Reg. at 54.) The Guidance “extracts and synthesizes key concepts identified by the courts as abstract ideas,” and these concepts include “[c]ertain methods of organizing human activity,” and, more particularly “commercial” interactions. (Id. at 52.) For example, a claim that “broadly recites the commercial practice of using a computer for locating available real estate properties” (i.e., properties available for purchase) is directed to an “abstract idea.” (Move, Inc. v. Real Estate Alliance Ltd., 721 Fed. Appx. 950, 955 (Fed. Cir. 2018).) In the second prong of Step 2A (Prong Two), a determination is made as to whether the claim contains additional elements that “integrate” the abstract idea “into a practical application.” (See 2019 § 101 Guidance, 84 Fed. Reg. at 53.) “Additional elements” are “claim features, limitations, and/or steps that are recited in the claim beyond the identified judicial exception.” (Id. at 55 n.24.) When a claim’s additional elements are computer components, and the claim “merely includes instructions to implement an abstract idea on a computer, or merely uses a computer as tool to perform an abstract idea,” this is not enough to integrate an abstract idea into a practical application. (Id. at 55.) 3 The Manual of Patent Examining Procedure (“MPEP”) now incorporates this revised guidance and subsequent updates at Section 2106 (9th ed. Rev. 10.2019, rev. June 2020). Appeal 2020-005503 Application 15/288,159 5 If a claim recites an abstract idea under Prong One of Step 2A, and fails to integrate the abstract idea into a practical application under Prong Two of Step 2A, the claim is “directed to” an abstract idea under the first step of the Alice framework. (2019 § 101 Guidance, 84 Fed. Reg. at 51.) In Step 2B, a determination is made as to whether the additional elements recited in the claim, individually or in combination, amount to “significantly more” than the abstract idea itself. (2019 § 101 Guidance, 84 Fed. Reg. at 56.) If the additional elements consist of a conventional arrangement of well-understood, routine, conventional computer components, they will not amount to significantly more under the second step of the Alice framework. (See id.) If a claim is “directed to” an abstract idea under Step 2A, and its additional elements do not amount to “significantly more” under Step 2B, the claim does not satisfy the Alice framework for patent eligibility. (2019 § 101 Guidance, 84 Fed. Reg. 56.) Analysis We agree with the Examiner’s conclusion that independent claim 1 does not satisfy the Alice framework for patent eligibility. More specifically, we agree with the Examiner that, under Prong One of Step 2A, independent claim 1 recites an “abstract idea,” namely a “commercial interaction.” (Non-Final Action 7.) Independent claim 1 recites receiving, from a “consumer,” a request for an “item” which is “unavailable for purchase” at the time of the request, “matching” the consumer’s request for the item “with the availability for the requested item from the vendor system at the later time to identify that the requested item is available for purchase by the consumer,” and “alerting” the Appeal 2020-005503 Application 15/288,159 6 consumer “that the requested item is available for purchase.” (Appeal Br., Claims App.) The consumer’s request includes his/her “contact details” and the consumer is alerted “using the contact details of the received request.” (Id.) Thus, claim 1 recites a commercial interaction traditionally performed by a vendor so as to not surrender a potential purchase by a consumer due to temporarily low inventory. As explained by the Examiner, it has been commercially commonplace for a consumer to “go into a vendor store to inquire about the purchase of a product” which is “currently unavailable.” (Answer 17.) When this happened, the vendor would “write down that the consumer wants that item when it becomes available for purchase,” compare the consumer’s request “with newly added inventory at a later time,” and then contact the consumer “to let them know they may now purchase the item.” (Id. at 17–18.) As for Prong Two of Step 2A, we agree with the Examiner that the additional elements in independent claim 1 “do not integrate the recited abstract idea into a practical application.” (Non-Final Action 4.) Independent claim 1 requires the receiving, matching, and alerting functions to be performed by an “order fulfillment system” having an “interface,” a “matching system,” and an “alerting system.” (Appeal Br., Claims App.) Claim 1 also requires that the consumer’s request be “by a computer device being used by [the] consumer” and the alerting system to “electronically” alert the consumer. (Id.) These additional elements are generic computer components performing generic computer functions. The Appellant argues that independent claim 1 sets forth “computing devices” which constitute a “particular machine” that is “integral to the Appeal 2020-005503 Application 15/288,159 7 claims.” (Appeal Br. 5.) However, as indicated above, any machines listed in the claim language are generic computer components. And a contention that the mere mention of generic computer components can sway the § 101 outcome in the Appellant’s favor contradicts established Supreme Court precedent.4 The Appellant argues that independent claim 1 transforms “data” into a different state or thing. (Appeal Br. 5.) Inasmuch as the transformation of data can sometimes constitute a practical-application integration, claim 1 does not really require any transformation of data. A consumer’s request for an item is received along with his/her contact information, the requested item is matched with availability, and, if the item is available, the consumer is contacted using his/her contact information. Claim 1 does not require any conversion, adaptation, or other transformation of the data corresponding to the consumer’s request, the consumer’s contact information, and/or the vendor’s availability/unavailability of the item. The Appellant argues that, like the claims at issue in Core Wireless Licensing S.A.R.L. v. LG Electronics, 880 F.3d 1356 (Fed. Cir. 2018), independent claim 1 sets forth “an improvement in the user interface of a computing device.” (Appeal Br. 6.) However, claim 1 only requires the 4 When an additional element in a claim is a “computer,” the relevant question is not whether the claim requires the computer to accomplish a recited function. (Alice, 573 U.S. at 223.) Rather, “the relevant question” is whether the claim does more than simply “instruct the practitioner to implement the abstract idea” on a computer. (Id. at 225.) The mere recitation of a computer in the claim, and/or words simply saying “apply” the abstract idea “with a computer,” will not transform the abstract idea into a patent-eligible invention.” (Id. at 223.) In short, the sheer introduction of a computer into the claim is not enough to “impart patent eligibility.” (Id.) Appeal 2020-005503 Application 15/288,159 8 order fulfillment system to have “an interface that receives a request for an item by a computing device being used by a consumer.” (Id., Claims App.) The Appellant does not explain, and we do not see, how the interface’s receipt of this request improves interface technology. As for Step 2B, we agree with the Examiner that the Specification evidences that independent claim 1 does not include “additional elements that are sufficient to amount to significantly more than the judicial exception.” (Non-Final Action 8.) The Specification describes and depicts consumer computer devices 102, a vendor server 120, a backend system 130, data storage 132, and the networking arrangement therebetween, as conventional. (See Spec. ¶¶ 27–29, Fig. 1.) The Appellant argues that the Specification “describes in the background the conventional systems in the industry and the issues not solved or addresse[d] by the conventional industry systems and methods.” (Appeal Br. 7.) However, the background section of the Specification simply states, in total, that “[i]n order for a user to purchase items, a repository of items was previously needed” and that, “[i]f stock in the items became low or was unavailable, the user would not be able to complete the transaction.” (Spec. ¶ 3.) As discussed above, this is not a new issue in consumer-vendor interactions, and is solved by the vendor letting the consumer know when a previously requested is available in stock. (See Answer 17–18.) Thus, we agree with the Examiner that independent claim 1 does not pass the Alice framework for patent eligibility. Appeal 2020-005503 Application 15/288,159 9 Summary We sustain the Examiner’s rejection of independent claim 1 under 35 U.S.C. §101. The Appellant argues claims 1–20 as a group (see Appeal Br. 4–8), and so claims 2–20 fall with independent claim 1.5 REJECTION II The Examiner rejects claims 1–10 and 12–20 under 35 U.S.C. § 103 as unpatentable over Nelson,6 Gupta,7 and Sakurai.8 (Non-Final Action 11.) Obviousness “Rejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” (KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).) However, an obviousness evaluator “need not seek out precise teachings directed to the specific subject matter of the challenged claim” as “the inferences and creative steps that a person of ordinary skill in the art would employ” can be taken into account. (Id.) For example, “[t]he combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” (Id. at 416.) 5 “When multiple claims subject to the same ground of rejection are argued as a group or subgroup by appellant, the Board may select a single claim from the group or subgroup and may decide the appeal as to the ground of rejection with respect to the group or subgroup on the basis of the selected claim alone.” (37 CFR § 41.37(c) (1)(iv).) 6 US 2004/0153374 Al, published August 5, 2004. 7 US 8,255,288 B1, issued August 28, 2012. 8 US 2015/0081466 Al, published March 19, 2015. Appeal 2020-005503 Application 15/288,159 10 Analysis We agree with the Examiner that the record adequately establishes that the apparatus set forth in independent claim 1 would have been obvious over the collective teachings of Nelson, Gupta, and Sakurai. (See Non-Final Action 11–14, Answer 21–23.) Nelson discloses a ‘ticket reselling system” which, “[w]hen tickets become available for resale,” communicates this availability to “potential buyers.” (Nelson ¶ 6.) In Nelson’s system, a buyer communicates request data 17 to specify a request for a ticket (id. ¶ 55), a seller communicates ticket data 16 about a ticket available “for resale” (id.), and a determination is made as to whether a “match exists between” the ticket data 16 and the request data 17 (id. ¶ 56). Thus, Nelson discloses an order fulfilment system that receives a request (e.g., from a computing device being used by a consumer) “about the availability of the item from a vendor,” receives information “about an availability of the item” from the vendor (e.g., a “vendor system”), and a “matching system that matches the received request for the item from the consumer with the availability for the requested item from the vendor system,” as required by independent claim 1. The Appellant argues that, in Nelson, when the buyer communicates the request data 17 for a ticket, the ticket is not “unavailable for purchase.” (Appeal Br. 9.) However, as explained by the Examiner, Nelson teaches that the buyer’s request data 17 can be received prior to a ticket’s availability. (Answer 22.) Indeed, Nelson teaches that “servers 14 may screen ticket data 16 for newly available tickets that match criteria set by buyers via request data 17, and generate individualized software notes viewable by Appeal 2020-005503 Application 15/288,159 11 specific buyers to notify the buyers that tickets matching their requests are available for purchase.” (Nelson ¶ 34.) To the extent that one of ordinary skill in the art would not appreciate that, in Nelson’s system, the buyer’s request data 17 could include contact details to notify the buyer, and/or that a vendor could provide information regarding a currently unavailable ticket, the Examiner can rely upon Gupta and Sakurai to fill in these gaps. (See Non-Final Action 12–14; Answer 21–23; Gupta c4:29–51, c5:46–67; Sakurai ¶¶ 74–85, 96, 103.) The Appellant argues that there is “no motivation” to combine the teachings of Nelson, Gupta, and Sakurai. (Appeal Br. 10.) However, the Appellant does not dispute that the Examiner’s proposed combination of the prior art “would have only united elements of the prior art, with no change in their respective functions, and the combination would have yielded predictable results.” (Non-Final Action 13, 14.) And the record supports the Examiner’s position in this regard. (See Nelson ¶¶ 29, 34, 46–48, 55; Gupta c4:29–51, c5:46–67, c6:15–27; Sakurai ¶¶ 74–85, 96, 103.) Thus, the Appellant does not persuade us that the Examiner errs in concluding that the apparatus set forth in independent claim 1 would have been obvious over the combined teachings of Nelson, Gupta, and Sakurai. Summary We sustain the Examiner’s rejection of independent claim 1 under 35 U.S.C. §103. The Appellant argues claims 1–10 and 12–20 as a group (see Appeal Br. 8–10), and so claims 2–10 and 12–20 fall with independent claim 1.9 9 “When multiple claims subject to the same ground of rejection are argued as a group or subgroup by appellant, the Board may select a single claim Appeal 2020-005503 Application 15/288,159 12 REJECTION III The Examiner rejects claim 11 under 35 U.S.C. § 103 as unpatentable over Nelson, Gupta, Sakurai, and Neuwirth.10 (Non-Final Action 17.) The Appellant argues only that “Neuwirth fails to address the deficiencies in Nelson and Gupta and Sakura.” (Appeal Br. 10.) As discussed above, we are unpersuaded by the Appellant’s arguments that such deficiencies exist. Thus, we sustain the Examiner’s rejection of claim 11 under 35 U.S.C. § 103. REJECTION IV The Examiner rejects claims 1–20 under 35 U.S.C. § 112 as being indefinite. (Non-Final Action 6.) The Examiner points, with particularity, to claim language which lacks “antecedent basis” or is otherwise “unclear” (id.); and the Appellant offers no response much less satisfactory arguments to the contrary.11 Thus, we sustain the Examiner’s rejection of claims 1–20 under 35 U.S.C. § 112. from the group or subgroup and may decide the appeal as to the ground of rejection with respect to the group or subgroup on the basis of the selected claim alone.” (37 CFR § 41.37(c)(1)(iv).) 10 US 2014/0188734 Al, published July 3, 2014. 11 “[W]hen the USPTO has initially issued a well-grounded rejection that identifies ways in which language in a claim is ambiguous, vague, incoherent, opaque, or otherwise unclear in describing and defining the claimed invention, and thereafter the applicant fails to provide a satisfactory response,” it is proper to reject the claim as failing to meet the statutory requirements of § 112. (In re Packard, 751 F.3d. 1307, 1311 (Fed. Cir. 2014). Appeal 2020-005503 Application 15/288,159 13 CONCLUSION Claims Rejected 35 U.S.C. § References(s)/Basis Affirmed Reversed 1–20 101 Subject Matter Eligibility 1–20 1–10, 12–20 103 Nelson, Gupta, Sakurai 1–10, 12–20 11 103 Nelson, Gupta, Sakurai, Neuwirth 11 1–20 112 Indefiniteness 1–20 Overall Outcome 1–20 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED Copy with citationCopy as parenthetical citation