Ex Parte Asher et al

Patent Trial and Appeal Board

Dec 18, 2018

12903112 (P.T.A.B. Dec. 18, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/903,112 10/12/2010
63710 7590 12/20/2018
INNOVATION DIVISION
CANTOR FITZGERALD, L.P.
110 EAST 59TH STREET (6TH FLOOR)
NEW YORK, NY 10022
FIRST NAMED INVENTOR
Joseph M. Asher
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
05-7178-Cl 3280
EXAMINER
D'AGOSTINO, PAUL ANTHONY
ART UNIT PAPER NUMBER
3716
NOTIFICATION DATE DELIVERY MODE
12/20/2018 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):
patentdocketing@cantor.com
lkorovich@cantor.com
phowe@cantor.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOSEPH M. ASHER and ROBERT F. BAHRAMPOUR1
Appeal2017-001589
Application 12/903, 112
Technology Center 3700
Before STEFAN STAICOVICI, EDWARD A. BROWN, and
ARTHUR M. PESLAK, Administrative Patent Judges.
STAICOVICI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE-
Joseph M. Asher and Robert F. Bahrampour ("Appellants") appeal
under 35 U.S.C. § 134(a) from the Examiner's decision in the Final Office
Action (dated Feb. 9, 2015, hereinafter "Final Act.") rejecting claims 1-5
and 7-20. 2 We have jurisdiction over this appeal under 35 U.S.C. § 6(b ).
SUMMARY OF DECISION
We AFFIRM.
1 CFPH, LLC is identified as the real party in interest in Appellants' Appeal Brief
(filed Oct. 28, 2015, hereinafter "Appeal Br."). Appeal Br. 2.
2 Claims 6 and 21 are canceled. Appeal Br. 2.
Appeal2017-001589
Application 12/903, 112
INVENTION
Appellants' invention relates "to systems and methods for managing a
wireless lottery." Spec. para. 3.
Claim 1 and 20 are independent. Claims 1 is illustrative of the
claimed invention and reads as follows:
1. A method for determining credit for a sale made at a time
using an electronic communication device, the method
compnsmg:
determining, by at least one processor, a location of the
electronic communication device at the time of the sale;
determining by the at least one processor, for each of a
plurality of retailers, a distance between (a) the location of the
electronic communication device at the time of the sale and (b)
a location of the respective retailer;
determining, by the at least one processor, a respective
credit for each of the plurality of retailers based at least partially
on the determined distance between the location of the
electronic communication device at the time of the sale and the
location of each respective retailer; and
causing the respective credit to be provided to each of the
plurality of retailers.
REJECTIONS
I. The Examiner rejects claims 1-5 and 7-20 under 35 U.S.C. § 101 as
being directed to ineligible subject matter.
II. The Examiner rejects claims 1-5 and 7-20 on the ground of
nonstatutory double patenting as being unpatentable over claims 1--49
of Asher et al. (US 7,811,172 B2, iss. Oct. 12, 2010, hereinafter
"Asher").
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ANALYSIS
Rejection I
Claims 1 and 20
Appellants have not presented arguments for the patentability of claim
20 apart from claim 1. See Appeal Br. 10. Therefore, in accordance with 37
C.F.R. § 4I.37(c)(l)(iv), we select claim 1 as the representative claim to
decide the appeal, with claim 20 standing or falling with claim 1.
Section 101 of the Patent Act defines patent-eligible subject matter:
"Whoever 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 title." 35 U.S.C. § 101. In interpreting this statutory
provision, the Supreme Court has held that its broad language is subject to
an implicit exception for "laws of nature, natural phenomena, and abstract
ideas," which are not patentable. Alice Corp. Pty. Ltd. v. CLS Bank Int 'l,
134 S. Ct. 2347, 2355 (2014).
The Supreme Court has 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." Alice,
134 S. Ct. at 2355 (citing Mayo Collaborative Servs. v. Prometheus Labs.,
Inc., 566 U.S. 66 (2012)). According to the Supreme Court's framework,
we must first determine whether the claims at issue are directed to one of
those concepts (i.e., laws of nature, natural phenomena, and abstract ideas).
Id. If so, we must secondly "consider the elements of each claim both
individually and 'as an ordered combination' to determine whether the
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additional elements 'transform the nature of the claim' into a patent-eligible
application." Id. (quoting Mayo, 566 U.S. at 79, 78). The Supreme Court
characterizes the second step of the analysis as "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. ( alteration in original) ( quoting
Mayo, 566 U.S. at 72-73).
Step One
The Examiner determines that the claimed method describes "credit
for sale { determining sales commission}." Final Act. 2. According to the
Examiner, "claim [1] concem[s] 'sales,' 'retailers,' 'locations,' and 'causing
the respective credit to be provided to each of the plurality of retailers,'"
which "encompass a plurality of fundamental economic practices."
Examiner's Answer 2-3 (dated Sept. 14, 2016, hereinafter "Ans."). The
Examiner explains that such fundamental economic practices include
retailing ("[ s ]ales made among multiple retailers"), contract formation
("[ fJinancial relationships among the plurality of retailers"), and a
mathematical algorithm ("[ n ]umerically determining the credit or
commissions allocated among the retailers"). Id. at 3. Thus, the Examiner
determines that "the claims recite fundamental economic practices similar to
those the Court found to be abstract." Id. at 5.
The first prong of the test requires us to determine whether the
challenged claims are directed to an abstract idea. To that end, Appellants
argue that the Examiner "fails to identify which specific recitation( s) recite
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the alleged abstract idea of 'determining credit for sale,' and thus fails to
'refer[] to where [the abstract idea exception] is recited."' Appeal Br. 6.
Appellants contend that "the phrase 'credit for sale' appears only in the
preamble of method claim 1," and, thus, is not sufficient to establish that
the actions specified in the body of method claim 1 recite an abstract idea.
Reply Brief 3 (filed Nov. 14, 2016, hereinafter "Reply Br."). According to
Appellants, the Examiner's "characterization of the claim[] as reciting the
allegedly abstract idea of' credit for sale' is an improper over-generalization
of the claim[] that fails to take into account what the claim[] actually
recite[s]." Id. at 4 (citing Enfish, LLC v. Microsoft Corp., 822 F.3d 1327,
1337 (Fed. Cir. 2016). Thus, Appellants assert that the Examiner "fails to
establish that the alleged abstract idea of 'determining credit for a sale' is, in
fact, abstract," because the Examiner "fails to provide any evidence,
whatsoever, to support the assertion that the alleged abstract idea is a (i)
fundamental economic practice (ii) that is long prevalent in our system of
commerce and taught in any introductory finance class and is (iii) a building
block of the modem economy." Appeal Br. 6-7 (citing Alice, 134 S.Ct. at
2356), 9.
We do not find Appellants' arguments persuasive. Under Alice, claim
1 is directed to an abstract idea, which the Examiner accurately describes as
"determining sales commission." See Final Act. 2; see also Spec. para 8
("determin[ing] how sales commissions will be paid"). The idea that a
retailer is paid a sale commission is a type of fundamental business practice
that is not patent-eligible under Alice. We agree with the Examiner that
claim 1 is similar to claims found to be ineligible in Cybersource Corp. v.
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Retail Decisions, Inc., 654 F.3d 1366 (Fed. Cir. 2011) (verifying credit card
fraud); Bilski v. Kappas, 561 U.S. 593 (2010) (hedging risk); and OIP
Technologies, Inc. v. Amazon.com, Inc., 788 F.3d 1359 (Fed. Cir. 2015)
( automatic pricing in electronic commerce) because claim 1 encompasses
"fundamental economic practices." Ans. 3. Appellants do not adequately
distinguish claim 1 from those found patent-ineligible in Cybersource,
Bilski, and OIP. See Reply Br. 7-8. Rather, Appellants rely on Amdocs
(Israel) Limited v. Openet Telecom, Inc., 841 F.3d 1288 (Fed. Cir. 2011), but
fail to adequately explain why the claims in Amdocs, which are related to an
improvement in computer technology, are more similar to instant claim 1
than the claims in Cybersource, Bilski, and OIP, which are related to
"fundamental economic practices." See Reply Br. 8.
With respect to the steps of method claim 1, the Examiner is correct
that claim 1 "recites[ s] use of a processor to determine locations of
electronic devices, distances between retailers, respective credits for said
retailers, and providing said credits from sales." Final Act. 3. Thus, at best,
claim 1 provides a practical application for paying a sales commission based
on manipulating data ( determining locations of electronic devices and
distances between retailers and electronic devices) according to
mathematical relationships ( determining the sale commission). However, a
recitation of a practical application for an abstract idea is insufficient to
transform an abstract idea into an inventive concept. Cf CyberSource Corp.
v. Retail Decisions, Inc., 654 F.3d 1366, 1371 (Fed. Cir. 2011) ("The Court
[Parker v. Flook, 437 U.S. 584 (1978)] rejected the notion that the recitation
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of a practical application for the calculation could alone make the invention
patentable .... ").
Furthermore, we agree with the Examiner that the steps of claim 1
"can all ... be performed manually and ... amount to nothing more than
common computing functions claimed at a high level of generality to
retrieve, store, access, process and output data." Final Act. 3. "[M]ental
processes-or processes of human thinking-standing alone are not patentable
even if they have practical application." In re Comiskey, 554 F.3d 967,979
(Fed. Cir. 2009); see also Gottschalk v. Benson, 409 U.S. 63, 67 (1972)
("Phenomena of nature ... , mental processes, and abstract intellectual
concepts are not patentable, as they are basic tools of scientific and
technological work."). Here, first, the steps of "determining ... a location of
the electronic communication device at the time of the sale" and
"determining ... a distance between (a) the location of the electronic
communication device ... and (b) a location of the respective retailer" can
be performed by a human who simply reads a map. Second, the step of
determining the credit to be paid can be performed by a person constructing
a table to include the amount of credit due to respective retailers located at
various distances from a point of sale and then reading the table to determine
the respective credit (sales commission). Finally, the same person may then
manually pay the respective retailer the credit (sales commission) due.
As to Appellant's pre-emption argument (see Appeal Br. 8-9, Reply
Br. 7), the Supreme Court has stated that "patents that ... integrate the
building blocks [ of human ingenuity] into something more, thereby
transform[ing] them into a patent-eligible invention ... pose no comparable
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risk of pre-emption, and therefore remain eligible for the monopoly granted
under our patent laws." Alice, 134 S. Ct. at 2354--55 (second alteration in
original) ( citations and quotations omitted). Although a concern regarding
preemption is one that "undergirds [ the Supreme Court's] § 101
jurisprudence" overall (id. at 2358), it is not an issue addressed in the first
step of the analysis. See, e.g., DDR Holdings, LLC v. Hotels.com, L.P., 773
F.3d 1245, 1259 (Fed. Cir. 2014) (discussing preemption in the context of
the second step of the analysis). In other words, in the first step of the
analysis, the issue is not whether the claims preempt all possible
implementations of the identified abstract idea; rather, the issue is "the
'focus' of the claims, their 'character as a whole."' Elec. Power Grp. LLC v.
Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016) (quoting Enfzsh, 822 F.3d
at 1335-36, and Internet Patents Corp. v. Active Network, Inc., 790 F.3d
1343, 1346 (Fed. Cir. 2015)).
Moreover, characterizing preemption as a driving concern for patent
eligibility is not the same as characterizing preemption as the dispositive test
for patent eligibility. Instead, "[t]he 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, 134 S. Ct. at 2354).
Although "preemption may signal patent ineligible subject matter, the
absence of complete preemption does not demonstrate patent eligibility." Id.
Thus, that claim 1 requires paying a sales commission in a specific manner,
namely, using "multiple retailers and a determination of multiple distances"
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(Appeal Br. 8), does not demonstrate error in the determination that claim 1
is directed to patent-ineligible subject matter.
In conclusion, when read as a whole, independent claim 1 is directed
to paying a retailer a sale commission, and, for the reasons discussed above,
constitutes an abstract idea. The question to be settled next is whether claim
1 recites an element, or combination of elements, that is enough to ensure
that the claim is directed to significantly more than an abstract idea.
Step Two
With respect to the second step of the Alice framework, the Examiner
determines that "[t]he claim(s) do not include additional elements that are
sufficient to amount to significantly more than the judicial exception." Final
Act. 2. According to the Examiner, claim 1 "encompass[ es] generic
'electronic communication devices' which allow a 'processor' to determine
locations, retailers, and credit to be provided among the retailers." Ans. 5.
Appellants argue that "[t]he lack of a prior art rejection is strong
evidence that the claims must recite 'significantly more' than the various
'fundamental economic practices' alleged" by the Examiner. Reply Br. 6;
see also Appeal Br. 7. According to Appellants, the feature of determining
"a credit or commission ... based on a plurality of distances between a
plurality of retailers and a device at a time of purchase or sale" "is an
inventive step that is 'significantly more' than any alleged abstract idea."
Reply Br. 6.
We are not persuaded by Appellants' arguments because an allegation
that claims are novel and non-obvious in light of an absence of evidence
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does not conflict with the Examiner's conclusion of ineligibility under § 101
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) (citing
Mayo, 132 S. Ct. at 1304). Whether the claimed concept is
"[g]roundbreaking, innovative, or even brilliant ... does not by itself satisfy
the§ 101 inquiry." Ass 'nfor Molecular Pathology v. Myriad Genetics, Inc.,
133 S. Ct. 2107, 2117 (2013). Consequently, under the second step of the
Alice analysis, an abstract idea does not transform into an eligible inventive
concept just because the Examiner has not found prior art that discloses or
suggests it. Indeed, "[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." Diamond v. Diehr, 450 U.S. 175, 188-89
(1981).
Citing to DDR Holdings, 773 F.3d at 1257, Appellants further argue
that "the present claims solve a problem rooted in computer technology to
improve the functionality of allocating credits to retailers based on purchases
occurring in different geographies." Appeal Br. 9. According to Appellant,
"the claimed solution is necessarily implemented in a networked computer
environment." Id.; see also Reply Br. 8.
We do not find Appellants' arguments persuasive. Claim 1 does not
recite an "electronic communication device" or a "processor" that would
make the function performed by these elements unconventional to remove
the claim from the realm of an abstract idea. The test is not whether the
claimed "electronic communication device" or "processor" can perform a
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"new" function, i.e., determine a sale commission. It is whether performing
the function allows the claimed "electronic communication device" or
"processor" to function better. Here, like in Alice, the generic claimed
"processor" performs the tasks of determining locations of electronic
devices, of distances between retailers and electronic devices, and of a credit
due a retailer, perhaps more efficiently than a human; however, that does not
make the invention patent-eligible. Likewise, we agree with the Examiner
that the claimed "electronic communication device" can be either a
computer or a cell phone (see Ans. 6), and, moreover, is described by
Appellants' Specification as "wireless communication devices" including
generic "mobile phones, personal data assistants (PD As), computers, mini-
computers, etc." Spec. para. 26.
In other words, the claimed "electronic communication device" and
"processor" components function in a conventional manner to transmit and
analyze data. See Alice, 134 S. Ct. at 2359---60 (holding patent-ineligible
claims that "amount to 'nothing significantly more' than an instruction to
apply the abstract idea ... using some unspecified, generic computer" and in
which "each step does no more than require a generic computer to perform
generic computer functions" (internal quotation marks, citation omitted)).
The fact that these generic computer functions are applied to the particular
environment of a computer-aided sale commission payment process is not
sufficient to circumvent the prohibition against patenting an abstract idea.
See Bilski, 561 U.S. at 610-11.
Hence, unlike the situation in DDR Holdings, in which the problem of
retaining website visitors was a challenge particular to the Internet (DDR
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Holdings, 773 F.3d at 1257), the problem of paying a sale commission to a
retailer is not shown by Appellants to be a challenge particular to a computer
environment. Hence, claim 1 at most applies generic computer technology
to the process of paying a sale commission to a retailer. As such, "the basic
character of a process claim drawn to an abstract idea is not changed by
claiming only its performance by computers, or by claiming the process
embodied in program instructions on a computer readable medium."
CyberSource, 654 F.3d at 1375 (citing In re Abele, 684 F.2d 902 (CCPA
1982)).
For the above reasons, the recited elements, considered individually
and as an ordered combination, do not constitute an "inventive concept" that
transforms independent claim 1 into patent-eligible subject matter. See
Alice, 134 S. Ct. at 2355. Accordingly, we do not sustain the rejection of
claim 1 under 35 U.S.C. § 101 as directed to patent-ineligible subject matter.
Claim 20 falls with claim 1.
Claims 2-5 and 7-19
With respect to the rejection of claims 2-5 and 7-19, Appellants argue
that the Examiner fails to analyze each claim separately under 35 U.S.C.
§ 101. See Appeal, Br. 10-11. According to Appellant, "the specific
recitations of [each] claim ... recite 'significantly more' than the alleged
abstract idea." Id. at 11.
We are not persuaded by Appellants' arguments because the
Examiner specifically explains the limitations of each claim. See Final Act.
3--4; Ans. 7. Furthermore, statements that merely point out what a claim
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recites will not be considered an argument for separate patentability of the
claim. See In re Lovin, 99 USPQ2d 1373, 1379 (Fed. Cir. 2011). Here,
claims 2-5 and 7-19 merely add further details of the abstract steps recited
in claim 1 also without including an improvement to another technology or
technical field, an improvement to the functioning of the computer itself, or
meaningful limitations beyond generally linking the use of an abstract idea
to a particular technological environment. In other words, claims 2-5 and
7-19 further describe the method of paying a sale commission to a retailer of
claim 1, that is, further describe the abstract idea. "[C]ases have not
distinguished among different laws of nature according to whether or not the
principles they embody are sufficiently narrow." Mayo, 566 U.S. at 88-89
(citing Parker v. Flook, 437 U.S. 584 (holding narrow mathematical formula
unpatentable )). A specific abstract idea is still an abstract idea.
Lastly, in regard to the rejection of claims 9 and 12, we agree with
the Examiner's findings that the limitations of data collection, as per claim
9, and data distribution, as per claim 12, "can be performed manually."
Final Act. 4. Accordingly, the Examiner is correct in that the limitations of
claims 9 and 12 "are all machinations of translating the human analog of the
activity into machinery." Ans. 7. Appellants do not adequately explain why
the limitations of claims 9 and 12 cannot be performed manually, as the
Examiner finds. Without persuasive argument or evidence in support of
their position, Appellants' argument is unconvincing.
Accordingly, for the foregoing reasons, we likewise sustain the
rejection of claims 2-5 and 7-19 under 35 U.S.C. § 101 as directed to
patent-ineligible subject matter.
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Re} ection II
Appellants argue that the Examiner fails to "show how any specific
claim of the present application corresponds to any specific reference
claim." Appeal Br. 12. According to Appellants, the Examiner "does not
compare all of the recitations of any of claims 1-5 and 7-20 to any specific
claim of ... [Asher], nor does it set forth the obviousness analysis required
by MPEP § 804[I](B)(l)." Id. at 13.
We are not persuaded by Appellants' arguments. The Examiner is
correct "that the claims, with minor variations in phraseology ... [are]
practically identical to the claims of' Asher. Final Act. 7. Moreover, the
Examiner provides a direct one-to-one comparison of the instant claims to
the claims of Asher. See Ans. 8-9.
As Appellants do not dispute the Examiner's comparison, Appellants
do not apprise us of any error with the Examiner's nonstatutory double
patenting rejection. See Reply Br. 9. Therefore, we also sustain the
rejection of claims 1-5 and 7-20 on the ground of nonstatutory double
patenting as unpatentable over claims 1--49 of Asher.
SUMMARY
The Examiner's decision to reject claims 1-5 and 7-20 under 35
U.S.C. § 101 as being directed to ineligible subject matter is affirmed.
The Examiner's decision to reject claims 1-5 and 7-20 on the ground
of nonstatutory double patenting as being unpatentable over claims 1--49 of
Asher is affirmed.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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