Ex Parte Behun et al

Patent Trial and Appeal Board

Jul 25, 2018

13699205 (P.T.A.B. Jul. 25, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/699,205 01/22/2013 Gregory Irwin Behun
22429 7590 07/27/2018
HAUPTMAN HAM, LLP
2318 Mill Road
Suite 1400
ALEXANDRIA, VA 22314
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.
2800-016 5266
EXAMINER
VETTER, DANIEL
ART UNIT PAPER NUMBER
3628
NOTIFICATION DATE DELIVERY MODE
07/27/2018 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):
docketing@ipfirm.com
pair_lhhb@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GREGORY IRWIN BEHUN, ANTHONY PAUL FLYNN, and
MICHAEL THOMAS TOCZYLOWSKI
Appeal2017-004182 1
Application 13/699,205
Technology Center 3600
Before MURRIEL E. CRAWFORD, MICHAEL W. KIM, and
PHILIP J. HOFFMANN, Administrative Patent Judges.
KIM, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal from the Final Rejection of claims 1-11 and 13-21.
We have jurisdiction to review the case under 35 U.S.C. §§ 134 and 6.
The invention generally relates to managing ticket information by
validating electronic tickets and establishing a manifest of passengers on
board a train. Spec. ,r 5.
1 The Appellants identify National Railroad Passenger Corporation as the
real party in interest. Appeal Br. 2.
Appeal2017-004182
Application 13/699,205
Independent claim 1 is illustrative:
1. A system for use of electronic tickets, the system
comprising: a server communicatively coupled to a database, the
server arranged to:
issue a first electronic ticket responsive to a request from
a first passenger using a mobile device, the first electronic ticket
having a first bar code that identifies the first electronic ticket,
the first electronic ticket being associated with a group
reservation;
issue a second electronic ticket responsive to a request
from a second passenger using a computer, the second electronic
ticket having a second bar code that identifies the second
electronic ticket, the second electronic ticket being associated
with the same group reservation as the first electronic ticket;
issue a third electronic ticket responsive to a request from
a third passenger, the third electronic ticket being associated with
the same group reservation as the first electronic ticket;
modify a ticket status of at least one of the first electronic
ticket, the second electronic ticket and the third electronic ticket,
during a period in which the vehicle is in motion to indicate
modification of the issued electronic ticket by a passenger, and
based on a user selection, apply the modification of the ticket
status to at least one other electronic ticket of the first electronic
ticket, the second electronic ticket or the third electronic ticket;
and
a handheld scanner communicatively coupled to the server and
arranged to:
scan the first bar code presented by the first passenger on
the mobile device to identify the first electronic ticket;
scan the second bar code presented by the second
passenger printed on paper to identify the second electronic
ticket;
identify the third electronic ticket by searching the
database with at least one of:
at least a portion of a name of the third passenger,
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at least a portion of a reservation confirmation
number of the third passenger, or
at least a portion of a frequent traveler number of
the third passenger; and
validate at least one of the first electronic ticket, the second
electronic ticket or the third electronic ticket.
The Examiner rejected claims 1-11 and 13-21 under 35 U.S.C. § 101
as directed to non-statutory subject matter in the form of abstract ideas.
The Examiner rejected claims 2 and 4 under 35 U.S.C. § I03(a) as
unpatentable over Dove, et al., (US 2005/0109843 Al, published May 26,
2005) (hereinafter "Dove"), Green, et al., (US 6,957,772 Bl, issued Oct. 25,
2005) (hereinafter "Green"), and Sayers, et al., (US 2003/0183694 Al,
published Oct. 2, 2003) (hereinafter "Sayers").
The Examiner rejected claims 1, 3, 5, 11, 13, and 15 under
35 U.S.C. § I03(a) as unpatentable over Dove, Green, Sayers, and Guo
(US 2007/0265891 Al, published Nov. 15, 2007).
The Examiner rejected claims 6-10 and 16-20 under 35 U.S.C.
§ I03(a) as unpatentable over Dove, Green, Sayers, Guo, and Hunt
(US 2010/0070312 Al, published Mar. 18, 2010).
The Examiner rejected claim 14 under 35 U.S.C. § I03(a) as
unpatentable over Dove, Green, Sayers, Guo, and Chung
(US 2001/0034623 Al, published Oct. 25, 2001).
The Examiner rejected claim 21 under 3 5 U.S. C. § 10 3 (a) as
unpatentable over Dove, Green, Sayers, Guo, and Stenning
(US 2007/0286220 Al, published Dec. 13, 2007).
We AFFIRM.
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Application 13/699,205
ANALYSIS
Rei ection under 3 5 US. C. § 101
Principles of Law
An invention is patent-eligible if it claims a "new and useful process,
machine, manufacture, or composition of matter." 35 U.S.C. § 101. The
Supreme Court, however, has long interpreted § 101 to include implicit
exceptions: "[l]aws of nature, natural phenomena, and abstract ideas" are
not patentable. E.g., Alice Corp. Pty. Ltd. v. CLS Bank Int 'l, 134 S. Ct.
2347, 2354 (2014).
In determining whether a claim falls within the excluded category of
abstract ideas, we are guided in our analysis by the Supreme Court's two-
step framework, described in Mayo and Alice. Id. at 2355 (citing Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1296-97
(2012)). In accordance with that framework, we first determine whether the
claim is "directed to" a patent-ineligible abstract idea. See Alice, 134 S. Ct.
at 2356 ("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."); Bilski v. Kappas, 561 U.S. 593, 611 (2010) ("Claims 1 and 4 in
petitioners' application explain the basic concept of hedging, or protecting
against risk."); Diamond v. Diehr, 450 U.S. 175, 184 (1981) ("Analyzing
respondents' claims according to the above statements from our cases, we
think that a physical and chemical process for molding precision synthetic
rubber products falls within the § 101 categories of possibly patentable
subject matter."); Parker v. Flook, 437 U.S. 584, 594--595 (1978)
("Respondent's application simply provides a new and presumably better
method for calculating alarm limit values."); Gottschalk v. Benson, 409 U.S.
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63, 64 (1972) ("They claimed a method for converting binary-coded decimal
(BCD) numerals into pure binary numerals.").
The following method is then used to determine whether what the
claim is "directed to" is an abstract idea:
[T]he decisional mechanism courts now apply is to examine
earlier cases in which a similar or parallel descriptive nature can
be seen-what prior cases were about, and which way they were
decided. See, e.g., Elec. Power Grp., 830 F.3d at 1353-54. That
is the classic common law methodology for creating law when a
single governing definitional context is not available. See
generally Karl N. Llewellyn, The Common Law Tradition:
Deciding Appeals (1960). This more flexible approach is also
the approach employed by the Supreme Court. See Alice, 134 S.
Ct. at 2355-57. We shall follow that approach here.
Amdocs (Israel) Limited v. Openet Telecom, Inc., 841 F.3d 1288, 1294 (Fed.
Cir. 2016).
The patent-ineligible end of the spectrum includes fundamental
economic practices, Alice, 134 S. Ct. at 2357; Bilski, 561 U.S. at 611;
mathematical formulas, Flook, 437 U.S. at 594--95; and basic tools of
scientific and technological work, Benson, 409 U.S. at 69. On the patent-
eligible side of the spectrum are physical and chemical processes, such as
curing rubber, Diamond, 450 U.S. at 184 n.7, "tanning, dyeing, making
waterproof cloth, vulcanizing India rubber, smelting ores," and a process for
manufacturing flour, Gottschalk, 409 U.S. at 67.
If the claim is "directed to" a patent-ineligible abstract idea, we then
consider the elements of the claim-both individually and as an ordered
combination-to assess whether the additional elements transform the nature
of the claim into a patent-eligible application of the abstract idea. Alice, 134
S. Ct. at 2355. This is a search for an "inventive concept"-an element or
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combination of elements sufficient to ensure that the claim amounts to
"significantly more" than the abstract idea itself. Id.
Analysis
The Appellants argue independent claims 1, 2, and 15 together as a
group, by arguing independent claims 2 and 15 only by reference to the
arguments of independent claim 1. Appeal Br. 18. Therefore, we select
independent claim 1 as representative. See 37 C.F.R. § 4I.37(c)(l)(iv).
The Examiner finds independent claim 1 is "directed to the abstract
idea of managing an electronic ticket status associated with a group
reservation," and is abstract because it is both similar to other claims found
to be directed to abstract ideas (Final Act. 3, citing Content Extraction and
Transmission LLC v. Wells Fargo Bank, N.A., 776 F.3d 1343 (Fed. Cir.
2014) ), and because the steps taken in claim 1 could be performed mentally
by a human using pen and paper, except for the recitation of the server,
mobile device, computer, and bar code scanner (Answer 3, also citing
Versata Development Group, Inc. v. SAP America, Inc., 793 F.3d 1306 (Fed.
Cir. 2015) ). The Appellants do not address either Content Extraction or
Versata, or the assertion that the claimed process can be performed by a
human. For the reasons stated by the Examiner, we agree that the claims are
directed to abstract ideas.
We are unpersuaded that the claimed "system comprises numerous
components that are communicatively coupled and interact together," which
"is beyond that of a general linking to a 'generic computer."' Appeal
Br. 12-13; see also Reply Br. 5. The claimed server, mobile device,
computer, and scanner are described as general-purpose computers. See
Spec. ,r,r 59, 64---66. It is commonplace for a network of computers that
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encompass servers and mobile/desktop computers to communicate and
exchange information, and update stored information in a server, because
these are basic functions performed by general purpose computers.
The Appellants next argue that the claim is an improvement to
managing ticketing information that issues multiple tickets associated with a
single reservation, and permit the management of those tickets while the
travel vehicle is in motion. Appeal Br. 14. We are unpersuaded by that
argument. We are unable to discern a reason that associating the data of
multiple tickets to a single reservation, or updating information about
tickets, or reservations, while a vehicle is moving, transforms the abstract
idea the claims are directed to into eligible subject matter.
That is, just improving an abstract idea does not transform it into
eligible subject matter if the result of the improvement is still an abstract
idea. Associating more tickets to a single reservation is merely manipulating
data. Claims involving data collection, analysis, and display are directed to
an abstract idea. Elec. Power Grp. v. Alstom S.A., 830 F.3d 1350, 1353
(Fed. Cir. 2016) (holding that "collecting information, analyzing it, and
displaying certain results of the collection and analysis" are "a familiar class
of claims 'directed to' a patent-ineligible concept"); see also In re TL!
Commc 'ns LLC Patent Litig., 823 F.3d 607, 611 (Fed. Cir. 2016);
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093-94 (Fed. Cir.
2016).
More specifically, the Appellants assert the claimed system's
"capabilities improve the efficiency and accuracy of modifying a ticket
status." Appeal Br. 15. However, the Federal Circuit has held that if a
method can be performed by human thought alone, or by a human using pen
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and paper, it is merely an abstract idea and is not patent-eligible under § 101.
CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1373 (Fed. Cir.
2011) ("[A] method that can be performed by human thought alone is
merely an abstract idea and is not patent-eligible under§ 101.").
Additionally, mental processes, e.g., modifying a ticket status (see
Answer 3), as recited in independent claim 1, remain unpatentable even
when automated to reduce the burden on the user of what once could have
been done with pen and paper. Id. at 1375 ("That purely mental processes
can be unpatentable, even when performed by a computer, was precisely the
holding of the Supreme Court in Gottschalk v. Benson, [ 409 U.S. 63
(1972)].").
We are also unpersuaded by the Appellants' argument that the
claimed system "fundamentally alters a ticket status of an electronic ticket
by 'apply[ing] the modification of the ticket status to at least one other
electronic ticket."' Appeal Br. 16. But, this alleged transformation of ticket
status is, at best, merely a manipulation of data, which is not sufficient to
meet the transformation prong under 35 U.S.C. § 101. See Gottschalk, 409
U.S. at 71-72 (holding that a computer based algorithm that merely
transforms data from one form to another is not patent-eligible). This
applies to both status changes (see Spec. ,r 23) and validation (id. ,r 31 ),
because both involve only updating data records.
For these reasons, the Appellants have not demonstrated error in the
Examiner's rejection of claim 1. Therefore, we sustain the rejection of
claims 1, 2, and 15 under 35 U.S.C. § 101. We also sustain the rejection of
dependent claims 3-11, 13, 14 and 16-21 that were rejected along with
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claims 1, 2, and 15, and argued only by reference to the arguments directed
to independent claim 1. Appeal Br. 18.
Reiection under 35 USC § 103(a)
The Appellants argue independent claims 1 and 15 only by reference
to the arguments advanced for independent claim 2. Appeal Br. 24.
Therefore, we select independent claim 2 as representative. See 37 C.F.R.
§ 4I.37(c)(l)(iv).
We are unpersuaded by the Appellants' argument of error on the part
of the Examiner, because, according to the Appellants, "Sayers does not
apply a particular status modification to different tickets. Instead, Sayers
merely assigns different seats to different ticketholders." Appeal Br. 21; see
also Reply Br. 21.
Sayers discloses "when a group of tickets is purchased, each ticket in
the group is encoded with information identifying it as a member of the
group." Sayers ,r 24. Sayers further discloses that "[ifJ the bearer is first to
arrive, then seats are assigned to the bearer and to all members of the group.
If someone from the group has arrived ahead of the bearer, then seats would
be already reserved for the group, and so the bearer would be assigned one
of those seats." Id. ,r 26. Sayers, thus, discloses updating data in a data
record that links numerous tickets together.
The Specification does not define or limit the meaning of "status," so
we rely on the ordinary and customary meaning of "status" as "state or
condition with respect to circumstances." MERRIAM-WEBSTER ONLINE
DICTIONARY (https://www.merriam-webster.com/dictionary/status, last
retrieved on July 16, 2018). In Sayers when the first ticket in the group is
presented, the state of all tickets in the group is updated with the reserved
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state for those seats, thus, meeting the claim language. Although the
Appellants would have us impart additional significance to the meaning of
the updated data, specifically as being "checked-in" or related to train travel
(see Appeal Br. 21 ), we discern no significant difference between "checked-
in" and "reserved" in the context of the updated data, because in both cases a
data field of linked records is updated to a different state.
For this reason, the Appellants have not shown error in the
Examiner's obviousness rejection. Therefore, we sustain the rejection of
claims 1, 2, and 15 under 35 U.S.C. § 103(a). We also sustain the rejections
of dependent claims 3-11, 13, 14, and 16-21 that were not argued
separately. See id. 24--26.
DECISION
We AFFIRM the rejection under 35 U.S.C. § 101 of claims 1-11 and
13-21 as directed to ineligible subject matter.
We AFFIRM the rejections under 35 U.S.C. § 103(a) of claims 1-11
and 13-21 as obvious.
No time period for taking any subsequent action in connection with
this appeal may be extended under 3 7 C.F .R. § 1.13 6( a )(1 )(iv).
AFFIRMED
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