2021001745 (P.T.A.B. Dec. 1, 2021)

Stephen Tucker

Patent Trials and Appeals BoardDec 1, 2021

2021001745 (P.T.A.B. Dec. 1, 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. 15/783,374 10/13/2017 Stephen L Tucker 1748-2.840BS 5879 86636 7590 12/01/2021 BRUNDIDGE & STANGER, P.C. 1925 BALLENGER AVENUE, STE. 560 ALEXANDRIA, VA 22314 EXAMINER ERB, NATHAN ART UNIT PAPER NUMBER 3628 MAIL DATE DELIVERY MODE 12/01/2021 PAPER Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte STEPHEN L TUCKER ____________ Appeal 2021-001745 Application 15/783,374 Technology Center 3600 ____________ Before MURRIEL E. CRAWFORD, JOSEPH A. FISCHETTI, and JAMES P. CALVE, Administrative Patent Judges. CRAWFORD, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant1 seeks our review under 35 U.S.C. § 134 of the Examiner’s final rejection of claims 1–7. We have jurisdiction under 35 U.S.C. § 6(b). SUMMARY OF DECISION We AFFIRM. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies inventor Stephen L. Tucker as the real party in interest (Appeal Br. 3). Appeal 2021-001745 Application 15/783,374 2 THE INVENTION Appellant’s claims relate to the field of travel and travel related services and more particularly to an autonomous computerized system for managing exercisable rights (Spec. 1, Title). Claim 1 is representative of the subject matter on appeal. 1. An electronic computer system for managing the ownership of exercisable rights among members of said system in accordance with a set of predetermined exercise rules, said exercisable rights being provided by exercisable rights providers for ownership by members of said system, each of said exercisable rights being comprised of a plurality of separately exercisable sub-rights, said computer system comprising: a central processing unit (CPU) for controlling the operation of said electronic computer system; a storage unit coupled to said CPU for storing said exercisable rights that are owned by members of said system; and a clearing house coupled to said CPU for storing said exercisable sub-rights that have been relinquished by their owners, said clearing house comprising: an administration module for administrating said clearing house; a membership module coupled to said administration module for managing the members of said system; and a communications module coupled to said administration module for communicating the availability and status of said sub- exercisable rights to said members. THE REJECTIONS Claims 1–7 are rejected under 35 U.S.C. § 101 as directed to a judicial exception without significantly more. Claims 1, 2, and 5 are rejected under pre-AIA 35 U.S.C. § 102(b) as being anticipated by Muralidhar (US 2007/0208634 A1, Sept. 6, 2007). Appeal 2021-001745 Application 15/783,374 3 Claim 3 is rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Muralidhar in view of Robinson (US 2007/0288319 A1, Dec. 13, 2007). Claim 4 is rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Muralidhar in view of Robinson in further view of Nelson (US 2004/0153374 A1, Aug. 5, 2004). Claims 6 and 7 are rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Kohavi (US 2007/0073605 A1, Mar. 29, 2007), in view of Pappas (US 2011/0307279 A1, Dec. 15, 2011), in further view of Park (US 2012/0209673 A1, Aug. 16, 2012), in further view of Muralidhar. FINDINGS OF FACT We adopt the Examiner’s findings as set forth on page 13 of the Final Office Action. ANALYSIS 35 U.S.C. § 101 REJECTION We will sustain the rejection of claims 1–7 under 35 U.S.C. § 101. The Supreme Court set forth a framework for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of those concepts. First, . . . determine whether the claims at issue are directed to one of those patent-ineligible concepts. If so, . . . then ask, “[w]hat else is there in the claims before us?” To answer that question, . . . consider the elements of each claim both individually and “as an ordered combination” to determine whether the additional elements “transform the nature of the claim” into a patent-eligible application. [The Court] described step two of this analysis as a search for an “‘inventive concept’”—i.e., an element or combination of elements that is “sufficient to ensure that the Appeal 2021-001745 Application 15/783,374 4 patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself.” Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 217–218 (citations omitted) (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 72–73 (2012)). To perform this test, we must first determine whether the claims at issue are directed to a patent-ineligible concept. The Federal Circuit has explained that “the ‘directed to’ inquiry applies a stage-one filter to claims, considered in light of the [S]pecification, based on whether ‘their character as a whole is directed to excluded subject matter.’” See Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016) (quoting Internet Patents Corp. v. Active Network, Inc., 790 F.3d 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. In so doing we apply a “directed to” two-prong test: 1) evaluate whether the claim recites a judicial exception, and 2) if the claim recites a judicial exception, evaluate whether the judicial exception is integrated into a practical application. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50, 50–57 (Jan. 7, 2019) (“Guidance”). The Examiner determines that the claims are directed to managing the ownership of exercisable rights, each of which comprises a plurality of separately exercisable sub-rights (Final Act. 9; Ans. 14). The Examiner determines that the claim limitations relate to a certain method of organizing human activity (Final Act. 9). The Examiner finds that the judicial exception is not integrated into a practical application because the additional elements when considered both individually and as an ordered combination Appeal 2021-001745 Application 15/783,374 5 do not integrate the abstract idea into a practical application. The Examiner also finds that the claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception, either individually or as on ordered combination (Id.). The Specification discloses that the present invention is generally directed to the field of travel and travel related services and more particularly, is directed to an autonomous computerized system for managing exercisable rights related to such travel and related services (Spec. 1). The Specification teaches that there is a need for an improved method and apparatus for planning and sharing travel and travel related services. In the present invention, a person can hold several options in different locations and pay no upfront purchase price, no maintenance, or yearly assessment fees, and no mortgage but receive a discounted rental fee (Spec. 8). The Specification discloses that the invention relates to selling options for travel and if one is unable to exercise the option purchased, he or she will have the ability to make that option available to others in the marketplace in order to minimize the loss of the investment (Spec. 8). As such, the Specification teaches that the invention relates to the sale of options for travel related services. Consistent with this disclosure, claim 1 recites “storing said exercisable rights that are owned by members,” “storing said exercisable sub-rights that have been relinquished by their owners,” “administrating said clearing house,” “managing the members of said system,” “communicating the availability and status of said sub-exercisable rights to said members.” We thus agree with the Examiner’s findings that the claims are directed to managing the ownership of exercisable rights, each of which Appeal 2021-001745 Application 15/783,374 6 comprises a plurality of separately exercisable sub-rights. As such, the Specification discloses and claim 1 recites a system for controlling the behavior of persons concerning exercisable rights. Controlling the behavior of persons concerning exercisable rights is a method of organizing human behavior. Also, we find the steps such as storing exercisable rights owned by members, storing exercisable rights relinquished by members, storing exercisable subrights and, communicating the availability and status of sub-exercisable rights constitute “analyzing information by steps people go through in their minds, or by mathematical algorithms, without more, as essentially mental processes within the abstract-idea category.” Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016); see also buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014) (claims directed to certain arrangements involving contractual relations are directed to abstract ideas). Thus, we find that claim 1 recites the judicial exceptions of a method of organizing human activity and in the alternative, a mental process. Turning to the second prong of the “directed to test,” claim 1 requires a “central processing unit,” a “storage unit” and a “clearing house.” These recitations do not impose “a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception.” Guidance, 84 Fed. Reg. at 53. We find no indication in the Specification, nor does Appellant direct us to any indication, that the operations recited in claim 1 invoke any inventive programming, require any specialized computer hardware or other inventive computer components, i.e., a particular machine, or that the claimed invention is implemented using Appeal 2021-001745 Application 15/783,374 7 other than generic computer components to perform generic computer functions. See DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014) (“[A]fter Alice, there can remain no doubt: recitation of generic computer limitations does not make an otherwise ineligible claim patent-eligible.”). We also find no indication in the Specification that the claimed invention affects a transformation or reduction of a particular article to a different state or thing. Nor do we find anything of record, short of attorney argument, that attributes any improvement in computer technology and/or functionality to the claimed invention or that otherwise indicates that the claimed invention integrates the abstract idea into a “practical application,” as that phrase is used in the revised Guidance. See Guidance, 84 Fed. Reg. at 55. In this regard, the recitation does not affect an improvement in the functioning of CPU, storage unit or clearing house or other technology, does not recite a particular machine or manufacture that is integral to the claim, and does not transform or reduce a particular article to a different state or thing. Id. Thus, claim 1 recites judicial exceptions that are not integrated into practical applications and thus claim 1 is directed to abstract ideas. Turning to the second step of the Alice analysis, because we find that the claim 1 is directed to abstract ideas, the claim must include an “inventive concept” in order to be patent-eligible, i.e., there must be an element or combination of elements that are sufficient to ensure that the claim in practice amounts to significantly more than the abstract idea itself. See Alice, 573 U.S. at 217–18 (quoting Mayo, 566 U.S. at 72–73). Appeal 2021-001745 Application 15/783,374 8 The introduction of computer components, such as, the CPU, storage unit, and clearing house into the claim does not alter the analysis at Alice step two. [T]he mere recitation of a generic computer cannot transform a patent-ineligible abstract idea into a patent-eligible invention. Stating an abstract idea “while adding the words ‘apply it’” is not enough for patent eligibility. Nor is limiting the use of an abstract idea “‘to a particular technological environment.’” Stating an abstract idea while adding the words “apply it with a computer” simply combines those two steps, with the same deficient result. Thus, if a patent’s recitation of a computer amounts to a mere instruction to “implemen[t]” an abstract idea “on . . . a computer,” that addition cannot impart patent eligibility. This conclusion accords with the preemption concern that undergirds our § 101 jurisprudence. Given the ubiquity of computers, wholly 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.” Alice, 573 U.S. at 223 (alterations in original) (citations omitted). Instead, “the relevant question is whether the claim[] here do[es] more than simply instruct the practitioner to implement the abstract idea . . . on a generic computer.” Id. at 225. It does not. Taking the claim elements separately, the function performed by the computer components at each step of the process is purely conventional. Using a computer to retrieve, select, and apply decision criteria to data and modify the data as a result amounts to electronic data query and retrieval— one of the most basic functions of a computer. All of these computer functions are well-understood, routine, conventional activities previously known to the trading industry. See Elec. Power Grp., 830 F.3d at 1354; see also In re Katz Interactive Call Processing Patent Litig., 639 F.3d 1303, Appeal 2021-001745 Application 15/783,374 9 1316 (Fed. Cir. 2011) (“Absent a possible narrower construction of the terms ‘processing,’ ‘receiving,’ and ‘storing,’ . . . those functions can be achieved by any general purpose computer without special programming.”). In short, each step does no more than require a generic computer to perform generic computer functions. As to the data operated upon, “even if a process of collecting and analyzing information is ‘limited to particular content’ or a particular ‘source,’ that limitation does not make the collection and analysis other than abstract.” SAP Am. Inc. v. InvestPic, LLC, 898 F.3d 1161, 1168 (Fed. Cir. 2018). Considered as an ordered combination, the computer components of Appellant’s claim add nothing that is not already present when the steps are considered separately. The sequence of data reception-analysis-access- display is equally generic and conventional or otherwise held to be abstract. See Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014) (sequence of receiving, selecting, offering for exchange, display, allowing access, and receiving payment recited an abstraction); Inventor Holdings, LLC v. Bed Bath & Beyond, Inc., 876 F.3d 1372, 1378 (Fed. Cir. 2017) (holding that sequence of data retrieval, analysis, modification, generation, display, and transmission was abstract); Two-Way Media Ltd. v. Comcast Cable Commc’ns, LLC, 874 F.3d 1329, 1339 (Fed. Cir. 2017) (holding sequence of processing, routing, controlling, and monitoring was abstract). The ordering of the steps is, therefore, ordinary and conventional. Claim 1 does not, for example, purport to improve the functioning of the CPU, storage unit, or clearing house. As we stated above, claim 1 does not affect an improvement in any other technology or technical field. Thus, the claims at issue amount to nothing significantly more than instructions to Appeal 2021-001745 Application 15/783,374 10 apply the abstract idea of information access using some unspecified, generic computer. Under our precedents, that is not enough to transform an abstract idea into a patent-eligible invention. See Alice, 573 U.S. at 226. We have reviewed all the arguments (Appeal Br. 7–12) Appellant has submitted concerning the patent eligibility of the claims before us that stand rejected under 35 U.S.C. § 101. We find that our analysis above substantially covers the substance of all the arguments, which have been made. But, for purposes of emphasis, we will address various arguments in order to make individual rebuttals of same. We are not persuaded of error on the part of the Examiner by Appellant’s argument that the invention recites an improvement in a computer system (Appeal Br. 11). Specifically, Appellant argues that the corresponding Specification and drawings describe a problem not previously performable by a computer that improves computer-related technology by allowing computer performance of a function not performable by a computer, i.e., the management of exercisable rights and sub-rights. In support of this argument, Appellant argues that the claims are similar to the claims in McRO, Inc. v. Bandai Namco Games America Inc., 837 F.3d 1299 (Fed. Cir. 2016) (Appeal Br. 12). The claims in McRO were directed to “a specific asserted improvement in computer animation, i.e., the automatic use of rules of a particular type.” McRO, 837 F.3d at 1314. “[T]he claimed improvement [was] allowing computers to produce ‘accurate and realistic lip synchronization and facial expressions in animated characters’ that previously could only be produced by human animators. The claimed rules in McRO transformed a traditionally subjective process performed by human Appeal 2021-001745 Application 15/783,374 11 artists into a mathematically automated process executed on computers.” FairWarning IP, LLC v. Iatric Systems, Inc., 839 F.3d 1089, 1094 (Fed. Cir. 2016) (citations omitted) (differentiating the claims at issue from those in McRO). Contrary to Appellant’s contention, claim 1 here is critically different from those determined to be patent eligible in McRO. The claims in McRO were directed to the creation of something physical—namely, the display of “lip synchronization and facial expressions” of animated characters on screens for viewing by human eyes. McRO, 837 F.3d at 1313. The claimed improvement was to how the physical display operated (to produce better quality images). Unlike McRO, the claims here are not directed to an improvement that changed what computers can do. Rather, the instant claims recite typical computer functions that can be done on any general purpose computer. In this regard, any general computer can store, transmit, and analyze data as is recited in claim 1. In view of the foregoing, we will sustain the rejection as it is directed to claim 1. We will also sustain the rejection as it is directed to the remaining claims subject to this rejection because Appellant does not argue the separate eligibility of these claims. PRIOR ART REJECTIONS The Examiner has rejected claims 1, 2, and 5 under 35 U.S.C. § 102 as anticipated by Muralidhar. Appellant argues that Muralidhar does not disclose separately exercisable sub-rights and directs our attention to paragraph 13 of Muralidhar. Appeal Br. 4–6. We agree with the Examiner that this subject matter is disclosed in paragraph 49 of Muralidhar which Appeal 2021-001745 Application 15/783,374 12 states that the creation of options includes the ability to split the rights to post season tickets associated with season ticket ownership. We are not persuaded of error on the part of the Examiner by Appellant’s argument that Muralidhar does not disclose a clearing house for storing exercisable sub-rights. Appellant bases this argument partly on the argument that Muralidhar does not disclose separately exercisable sub-rights we have found unpersuasive. In addition, Appellant argues that the sub-rights in Muralidhar are sold and this cannot be considered a relinquishment as claimed (Appeal Br. 6). We agree with the Examiner’s response to this argument found on pages 10–12 of the Answer. We note that the Specification does not provide a definition for “relinquished.” As such, we find the ordinary and customary meaning of the term “relinquished” to mean to give up or to give over possession or control of. See Merriam-Webster Online Dictionary, https://www.merriam- webster.com/dictionary/relinquished, retrieved Nov. 17, 2021. Thus, we agree with the Examiner that the sale of options in Muralidhar is a relinquishment. In addition, we note that Appellant’s own Specification discloses that the rights or options in the clearing house may be relinquished by selling the rights (Spec. 5, 7; Fig. 5). We are not persuaded of error on the part of the Examiner by Appellant’s argument that the claims do not require that the exercisable sub-rights be sold in order to be placed in the clearing house. We agree with the Examiner that because there is no recitation that the sub-rights are not sold in claim 1, this argument is not commensurate with the scope of claim 1 and therefore is not persuasive. Appeal 2021-001745 Application 15/783,374 13 In view of the forgoing, we will sustain this rejection as it is directed to claim 1. We will also sustain this rejection as it is directed to claims 2 and 5 because Appellant has not argued the separate patentability of these claims. We will also summarily sustain the rejections of claims 3, 4, 6, and 7 under 35 U.S.C. § 103 because Appellant does not address these rejections and these claims. CONCLUSIONS OF LAW We conclude the Examiner did not err in rejecting claims 1–7 under 35 U.S.C. § 101 and in rejecting claims 1, 2, and 5 under 35 U.S.C. § 102 and claims 3, 4, 6, and 7 under 35 U.S.C. § 103(a). DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–7 101 Eligibility 1–7 1, 2, 5 102(b) Muralidhar 1, 2, 5 3 103(a) Muralidhar, Robinson 3 4 103(a) Muralidhar, Robinson, Nelson 4 6, 7 103(a) Kohavi, Pappas, Park, Muralidhar 6, 7 Overall Outcome 1–7 Appeal 2021-001745 Application 15/783,374 14 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