Airbnb, Inc.Download PDFPatent Trials and Appeals BoardMay 29, 20202019006070 (P.T.A.B. May. 29, 2020) 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. 13/909,626 06/04/2013 Khaled Hussein 26887-36776/US 2568 146250 7590 05/29/2020 AIRBNB/FENWICK SILICON VALLEY CENTER 801 CALIFORNIA STREET MOUNTAIN VIEW, CA 94041 EXAMINER MADAMBA, CLIFFORD B ART UNIT PAPER NUMBER 3692 NOTIFICATION DATE DELIVERY MODE 05/29/2020 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): FWAIRBNBPATENTS@FENWICK.COM PTOC@Fenwick.com patents@airbnb.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte KHALED HUSSEIN and JAMES BESHARA ____________ Appeal 2019-006070 Application 13/909,626 Technology Center 3600 ____________ Before ERIC S. FRAHM, CATHERINE SHIANG, and JOHN D. HAMANN, Administrative Patent Judges. SHIANG, Administrative Patent Judge. DECISION ON APPEAL Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 1, 2, 4–6, 9–19, 21–23, 26–36, 38–40, 43–51, and 53, which are all the claims pending and rejected in the application. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 We use “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies Airbnb, Inc. as the real party in interest. Appeal Br. 2. Appeal 2019-006070 Application 13/909,626 2 STATEMENT OF THE CASE Introduction The present invention relates to “group funding.” Spec. ¶ 2. In particular, “[a] variety of techniques are described herein for facilitating group funding in a network computing environment.” Abstract. Claim 1 is exemplary: 1. A group funding application programming interface (API), comprising at least one nontransitory computer-readable medium having computer program instructions stored therein which, when executed by one or more computing devices, cause the one or more computing devices to: create a group funding campaign by which each user of a population of users can provide payment information corresponding to a payment account for the user to contribute a payment using a client device of the user operating in a computing network; select at least one payment processor from a plurality of payment processors operating in the computing network to facilitate authorization and charging of the payments contributed by the population of users; specify a tilt amount that triggers charging of authorized ones of the payment accounts via the computing network when a total amount for charging to the authorized ones of the payment accounts meets or exceeds the tilt amount; initiate, for each of the population of users, authorization for an initial payment amount of the payment account for the user based on the payment information; identify, for each payment account, an authorization period for the payment account based on the payment information provided by each of the population of users, the authorization period describing a period of time during which a payment from the payment account is guaranteed; determine, for each payment account, a reauthorization amount according to a dynamic pricing policy associated with the group funding campaign, wherein the dynamic pricing policy specifies an increase or a decrease to the initial payment Appeal 2019-006070 Application 13/909,626 3 amount based on a current size of the population of users of the group funding campaign; and responsive to determining that the authorization period for one of the payment accounts has expired and determining the reauthorization amount for the payment account, initiate reauthorization of the payment account for the reauthorization amount within a threshold period of time after the expiration, wherein for at least the threshold period of time, it is statistically unlikely that the reauthorization is denied based on other activity on the payment account. Rejection2 Claims 1, 2, 4–6, 9–19, 21–23, 26–36, 38–40, 43–51, and 53, are rejected under 35 U.S.C. § 101 for being directed to patent-ineligible subject matter. Non-Final Act. 6–11. ANALYSIS We disagree with Appellant’s arguments. To the extent consistent with our analysis below, we adopt the Examiner’s findings and conclusions in (i) the action from which this appeal is taken and (ii) the Answer.3 Section 101 of the Patent Act provides “[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, subject to the conditions and requirements of this 2 Throughout this opinion, we refer to the (1) Non-Final Office Action dated January 11, 2019 (“Non-Final Act.”); (2) Appeal Brief dated April 24, 2019 (“Appeal Br.”); (3) Examiner’s Answer dated June 27, 2019 (“Ans.”); and (4) Reply Brief dated August 12, 2019 (“Reply Br.”). 3 To the extent Appellant advances new arguments in the Reply Brief without showing good cause, Appellant has waived such arguments. See 37 C.F.R. § 41.41(b)(2). Appeal 2019-006070 Application 13/909,626 4 title.” 35 U.S.C. § 101. However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include implicit exceptions: “[l]aws of nature, natural phenomena, and abstract ideas” are not patentable. E.g., Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014) (internal quotation marks and citation omitted). In determining whether a claim falls within an excluded category, we are guided by the Supreme Court’s two-step framework, described in Mayo and Alice. Alice, 573 U.S. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with that framework, we first determine what concept the claim is “directed to.” See Alice, 573 U.S. at 219 (“On their face, the claims before us are drawn to the concept of intermediated settlement, i.e., the use of a third party to mitigate settlement risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4 in petitioners’ application explain the basic concept of hedging, or protecting against risk.”). Concepts determined to be abstract ideas, and, thus, patent ineligible, include certain methods of organizing human activity, such as fundamental economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611); mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts determined to be patent eligible include physical and chemical processes, such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191 (1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S. 252, 267–68 (1853))); and manufacturing flour (Benson, 409 U.S. at 69 (citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))). Appeal 2019-006070 Application 13/909,626 5 In Diehr, the claim at issue recited a mathematical formula, but the Supreme Court held that “a claim drawn to subject matter otherwise statutory does not become nonstatutory simply because it uses a mathematical formula.” Diehr, 450 U.S. at 187; see also id. at 191 (“We view respondents’ claims as nothing more than a process for molding rubber products and not as an attempt to patent a mathematical formula.”). Having said that, the Supreme Court also indicated that a claim “seeking patent protection for that formula in the abstract . . . is not accorded the protection of our patent laws, and this principle cannot be circumvented by attempting to limit the use of the formula to a particular technological environment.” Id. (citing Benson and Flook); see, e.g., id. at 187 (“It is now commonplace that an application of a law of nature or mathematical formula to a known structure or process may well be deserving of patent protection.”). If the claim is “directed to” an abstract idea, we turn to the second step of the Alice and Mayo framework, where “we must examine the elements of the claim to determine whether it contains an ‘inventive concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-eligible application.” Alice, 573 U.S. at 221 (citation omitted). “A claim that recites an abstract idea must include ‘additional features’ to ensure ‘that the [claim] is more than a drafting effort designed to monopolize the [abstract idea].’” Id. (quoting Mayo, 566 U.S. at 77). “[M]erely requir[ing] generic computer implementation[] fail[s] to transform that abstract idea into a patent-eligible invention.” Id. In 2019, the PTO published revised guidance on the application of § 101. USPTO, 2019 REVISED PATENT SUBJECT MATTER ELIGIBILITY Appeal 2019-006070 Application 13/909,626 6 GUIDANCE, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Guidance”).4 Under the guidance set forth in the Guidance, we first look to whether the claim recites: (1) any judicial exceptions, including certain groupings of abstract ideas (i.e., mathematical concepts, certain methods of organizing human activity such as a fundamental economic practice, or mental processes) (Step 2A, Prong 1); and (2) additional elements that integrate the judicial exception into a practical application (see MANUAL OF PATENT EXAMINING PROCEDURE (“MPEP”) § 2106.05(a)–(c), (e)–(h)) (9th Ed., Rev. 08.2017, 2018) (Step 2A, Prong 2). Only if a claim (1) recites a judicial exception and (2) does not integrate that exception into a practical application, do we then look to whether the claim: (3) adds a specific limitation beyond the judicial exception that is not “well-understood, routine, conventional” in the field (see MPEP § 2106.05(d)); or (4) simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. (Step 2B.) See Guidance, 84 Fed. Reg. at 54–56.5 Turning to Step 2A, Prong 1 of the Guidance (Alice step one), claim 1 (with emphases) recites: 1. A group funding application programming interface (API), comprising at least one nontransitory computer-readable medium having computer program instructions stored therein 4 The Guidance was updated in October 2019. 5 Appellant argued the Examiner failed to apply the Guidance (Appeal Br. 11–13). The Examiner responded by applying the Guidance in the Answer (Ans. 4–8), and Appellant had an opportunity to respond, and did respond in the Reply Brief (Reply Br. 2–4). Appeal 2019-006070 Application 13/909,626 7 which, when executed by one or more computing devices, cause the one or more computing devices to: create a group funding campaign by which each user of a population of users can provide payment information corresponding to a payment account for the user to contribute a payment using a client device of the user operating in a computing network; select at least one payment processor from a plurality of payment processors operating in the computing network to facilitate authorization and charging of the payments contributed by the population of users; specify a tilt amount that triggers charging of authorized ones of the payment accounts via the computing network when a total amount for charging to the authorized ones of the payment accounts meets or exceeds the tilt amount; initiate, for each of the population of users, authorization for an initial payment amount of the payment account for the user based on the payment information; identify, for each payment account, an authorization period for the payment account based on the payment information provided by each of the population of users, the authorization period describing a period of time during which a payment from the payment account is guaranteed; determine, for each payment account, a reauthorization amount according to a dynamic pricing policy associated with the group funding campaign, wherein the dynamic pricing policy specifies an increase or a decrease to the initial payment amount based on a current size of the population of users of the group funding campaign; and responsive to determining that the authorization period for one of the payment accounts has expired and determining the reauthorization amount for the payment account, initiate reauthorization of the payment account for the reauthorization amount within a threshold period of time after the expiration, wherein for at least the threshold period of time, it is Appeal 2019-006070 Application 13/909,626 8 statistically unlikely that the reauthorization is denied based on other activity on the payment account.6 All of the italicized limitations are associated with group funding. For example, “create a group funding campaign by which each user of a population of users can provide payment information corresponding to a payment account for the user to contribute a payment” generates a fundraising campaign for group founding. Further, “select at least one payment processor from a plurality of payment processors . . . to facilitate authorization and charging of the payments contributed by the population of users” and “specify a tilt amount that triggers charging of authorized ones of the payment accounts . . . when a total amount for charging to the authorized ones of the payment accounts meets or exceeds the tilt amount” select at least a payment processor and specify a tilt amount to facilitate the group funding. In addition, “initiate, for each of the population of users, authorization for an initial payment amount of the payment account for the user based on the payment information” and “identify, for each payment account, an authorization period for the payment account based on the payment information provided by each of the population of users, the authorization period describing a period of time during which a payment from the payment account is guaranteed” initiate authorization and determine the authorization period to facilitate group funding. Finally, 6 We select claim 1 as the representative claim, and group the remaining claims accordingly under 37 C.F.R. § 41.37(c)(1)(iv) (“[T]he failure of appellant to separately argue claims which appellant has grouped together shall constitute a waiver of any argument that the Board must consider the patentability of any grouped claim separately.”). Appeal 2019-006070 Application 13/909,626 9 responsive to determining that the authorization period for one of the payment accounts has expired and determining the reauthorization amount for the payment account, initiate reauthorization of the payment account for the reauthorization amount within a threshold period of time after the expiration, wherein for at least the threshold period of time, it is statistically unlikely that the reauthorization is denied based on other activity on the payment account and “determine, for each payment account, a reauthorization amount according to a dynamic pricing policy associated with the group funding campaign, wherein the dynamic pricing policy specifies an increase or a decrease to the initial payment amount based on a current size of the population of users of the group funding campaign” determine a reauthorization amount to facilitate group funding, and initiate reauthorization within a threshold period of time to ensure payment for group funding. Our determination is supported by the Specification, which describes the existing idea of group funding, and the need to provide better techniques for group funding: Generally speaking, a group funding application (typically operating in a distributed network context such as the Internet) collects money from one or more entities (e.g., individuals or organizations) and then distributes the collected money to one or more entities. Examples of group funding applications include one where people fundraise for a nonprofit organization or a political campaign; fans raise money to pay a struggling musician’s medical bills; a group of friends pool their money together to rent a vacation home or planning a bachelor party, and what is commonly known as crowd funding where an entrepreneur tries to fund a startup company; etc. The diverse nature of such applications is apparent. . . . . . . . Appeal 2019-006070 Application 13/909,626 10 A variety of techniques are described herein for facilitating group funding in a network computing environment. As will become apparent, various implementations described herein may be characterized by advantages over conventional approaches to group or crowd funding. Spec. ¶¶ 2, 7. Similar to the concepts of intermediated settlement in Alice and hedging in Bilski, the concept of group funding “is a fundamental economic practice long prevalent in our system of commerce.” Alice, 573 U.S. at 216 (citations and internal quotation marks omitted). Accordingly, we conclude claim 1 recites a fundamental economic practice, which is one of certain methods of organizing human activity identified in the Guidance, and thus an abstract idea. See Guidance, Step 2A, Prong 1 (Groupings of Abstract Ideas). Appellant’s attorney arguments that While the claims may be related to an economic practice, the claims do not recite a fundamental economic practice because they are not fundamental. The claims include a plurality of concepts such as a tilt amount, a reauthorization amount based on a dynamic pricing policy, and reauthorization based on a time threshold that are non-fundamental. . . . . . . . the claimed concepts such as a tilt amount, a reauthorization amount based on a dynamic pricing policy, and reauthorization based on a time threshold would not be considered “fundamental” by an economist. (Appeal Br. 16) (emphases omitted) are unsubstantiated, as Appellant does not provide sufficient objective evidence to support the arguments. See In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (“attorney argument [is] not the kind of factual evidence that is required to rebut a prima facie case of Appeal 2019-006070 Application 13/909,626 11 obviousness”); Meitzner v. Mindick, 549 F.2d 775, 782 (CCPA 1977) (“Argument of counsel cannot take the place of evidence lacking in the record.”). Appellant cites paragraph 33 of the Specification (Appeal Br. 16), which describes using those concepts in group funding, but that paragraph does not address whether the concepts of “a tilt amount, a reauthorization amount based on a dynamic pricing policy [such as increasing or decreasing the amount], and reauthorization based on a time threshold [itself such as a certain period]” are “‘fundamental’ by an economist,” as Appellant argues (Appeal Br. 16).7 Turning to Step 2A, Prong 2 of the Guidance, contrary to Appellant’s assertion (Appeal Br. 11–19; Reply Br. 2–4), Appellant has not shown claim 1 recites additional elements that integrate the judicial exception into a practical application. In particular, Appellant has not shown the additional elements (“using a client device of the user operating in a computing network,” “operating in the computing network” “via the computing network”) integrate the judicial exception into a practical application.8 7 Those arguments are also unpersuasive for the reasons discussed below in Step 2A, Prong 2 because a claim for a new abstract idea is still an abstract idea. While not relied on for our analysis, we note “a tilt amount” has a long history of being associated with church collections. Similarly, hotels have long practiced “reauthorization amount based on a dynamic pricing policy [such as increasing or decreasing the amount]” and “reauthorization based on a time threshold [itself such as a certain period]”: when a guest decided to extend the stay for a much longer period of time, the hotel prudently requested credit card reauthorization for a larger amount before (or shortly after) the initial authorization expires. 8 The preamble also recites “application programming interface (API), comprising at least one nontransitory computer-readable medium having computer program instructions stored therein which, when executed by one or more computing devices, cause the one or more computing devices to[.]” Appeal 2019-006070 Application 13/909,626 12 Claim 1 is “not directed to an improvement in the way computers operate” and “the focus of the claims is not on . . . an improvement in computers as tools, but on certain independently abstract ideas that use computers [and computing network] as tools.” FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1095 (Fed. Cir. 2016). To the contrary, claim 1 is directed to the abstract idea of group funding, which includes authorization for an initial amount, determines an adjusted amount, and reauthorization of the adjusted amount within a certain period of time. Appellant’s arguments that the invention “provides an improvement over conventional, fundamental methods of fundraising” (Appeal Br. 17; see also Appeal Br. 16) and “efficient approach” (Appeal Br. 18–19), and “solves the conventional group funding platform problem of accepting an initial amount of money from contributors, and then having to track down and refund each contributor if the initial amount was no longer correct” (Appeal Br. 18) are unpersuasive because “a claim for a new abstract idea is still an abstract idea.” Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir. 2016). “[U]nder the Mayo/Alice framework, a claim directed to a newly discovered law of nature (or natural phenomenon or abstract idea) cannot rely on the novelty of that discovery for the inventive concept necessary for patent eligibility . . . .” Genetic Techs. Ltd. v. Merial L.L.C., 818 F.3d 1369, 1376 (Fed. Cir. 2016) (citations omitted). Further, Appellant’s argument about the absence of a prior art rejection (Reply Br. 3) is unpersuasive, because a prior art rejection is Regardless of whether the preamble is limiting, the preamble merely uses the computing devices and the associated application programming interface (API) as tools to implement an abstract idea, and does not integrate the judicial exception into a practical application. Appeal 2019-006070 Application 13/909,626 13 determined under 35 U.S.C. § 102 and § 103, which are different statutory requirements. As the Supreme Court emphasizes: “[t]he ‘novelty’ of any element or steps in a process, or even of the process itself, is of no relevance in determining whether the subject matter of a claim falls within the § 101 categories of possibly patentable subject matter.” Diehr, 450 U.S. at 188–89 (emphasis added). Our reviewing court further guides that “[e]ligibility and novelty are separate inquiries.” Two-Way Media Ltd. v. Comcast Cable Commc’ns, LLC, 874 F.3d 1329, 1340 (Fed. Cir. 2017). In addition, Appellant’s assertion regarding pre-emption (Appeal Br. 18) is unpersuasive, because “[w]hile preemption may signal patent ineligible subject matter, the absence of complete preemption does not demonstrate patent eligibility. . . . Where a patent’s claims are deemed only to disclose patent ineligible subject matter under the Mayo framework, as they are in this case, preemption concerns are fully addressed and made moot.” Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015); see also OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362–63 (Fed. Cir. 2015) (“that the claims do not preempt all price optimization or may be limited to price optimization in the e-commerce setting do not make them any less abstract”). As a result, we conclude claim 1 does not recite additional elements that integrate the judicial exception into a practical application. See Guidance, Step 2A, Prong 2. Turning to Step 2B of the Guidance (Alice step two), Appellant does not persuasively argue any specific limitation is not well-understood, routine, or conventional in the field. Nor does Appellant persuasively argue the Examiner erred in that aspect. In particular, Appellant cites the Appeal 2019-006070 Application 13/909,626 14 Specification to describe prior problems associated with group funding, and Appellant’s better techniques for group funding. See Appeal Br. 19–22. However, as discussed above, Appellant’s “efficient approach” (Appeal Br. 18–19) is “a claim for a new abstract idea” that uses computers and computer network as tools. See Synopsys, 839 F.3d at 1151; Genetic Techs., 818 F.3d at 1376; FairWarning, 839 F.3d at 1095; see also BSG Tech LLC v. BuySeasons, Inc., 899 F.3d 1281, 1290 (Fed. Cir. 2018) (explaining the Alice “Court only assessed whether the claim limitations other than the invention’s use of the ineligible concept to which it was directed were well- understood, routine and conventional” and “did not consider whether it was well-understood, routine, and conventional to execute the claimed intermediated settlement method on a generic computer”) (emphasis added).. In short, claim 1 does not “contain[] an “‘inventive concept’” sufficient to ‘transform’ the claimed abstract idea into a patent-eligible application.” Alice, 573 U.S. at 221. As a result, Appellant has not persuaded us the Examiner erred with respect to the Guidance’s Step 2B analysis. See Guidance, Step 2B. Because Appellant has not persuaded us the Examiner erred, we sustain the Examiner’s rejection of independent claim 1 under 35 U.S.C. § 101. For similar reasons discussed above, we sustain the Examiner’s rejection of dependent claims 2, 4–6, 9–19, 21–23, 26–36, 38–40, 43–51, and 53 under 35 U.S.C. § 101, as Appellant does not advance separate substantive arguments about those claims. See 37 C.F.R. § 41.37(c)(1)(iv). Appeal 2019-006070 Application 13/909,626 15 DECISION We affirm the Examiner’s decision rejecting claims 1, 2, 4–6, 9–19, 21–23, 26–36, 38–40, 43–51, and 53. In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 2, 4–6, 9– 19, 21–23, 26–36, 38– 40, 43–51, 53 101 Eligibility 1, 2, 4–6, 9– 19, 21–23, 26–36, 38– 40, 43–51, 53 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). See 37 C.F.R. § 41.50(f). AFFIRMED Copy with citationCopy as parenthetical citation