Ex Parte Dorr

Patent Trial and Appeal Board

Oct 11, 2018

14022003 (P.T.A.B. Oct. 11, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/022,003 09/09/2013 Robert C. Dorr
49845 7590 10/15/2018
SCHWEGMAN LUNDBERG & WOESSNER/EBAY
P.O. BOX 2938
MINNEAPOLIS, MN 55402
UNITED ST A TES OF AMERICA
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.
2043.284US2 1006
EXAMINER
HAMILTON, LALITA M
ART UNIT PAPER NUMBER
3691
NOTIFICATION DATE DELIVERY MODE
10/15/2018 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):
USPTO@SLWIP.COM
SLW@blackhillsip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERT C. DORR
Appeal2017-006607
Application 14/022,003 1
Technology Center 3600
Before HUBERT C. LORIN, ANTON W. PETTING, and
JOSEPH A. FISCHETTI, Administrative Patent Judges.
LORIN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Robert C. Dorr (Appellant) seeks our review under 35 U.S.C. § 134(a)
of the non-final rejection of claims 1-6, 8-15, and 17-22. We have
jurisdiction under 35 U.S.C. § 6(b).
SUMMARY OF DECISION
We AFFIRM.
THE INVENTION
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1 The Appellant identifies eBay Inc. as the real party in interest. App. Br. 2.
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Application 14/022,003
1. A method comprising:
determining, using one or more processors of a computer
system, an interest in a type of an item by a prospective buyer based
on an action by the prospective buyer with respect to a screen
associated with the type of the item;
selecting a classification of items stored in a memory of the
computer system based on a correlation between the type of the item
and keywords associated with the classification of items;
generating a sales lead pertaining to the classification of items
for insertion into the memory of the computer system; and
delivering the sales lead to a seller of at least one of the items
included in the classification of the items, the delivering including
transferring the sales lead from the memory of the computer system to
a memory of a machine of the seller.
THE REJECTIONS
The following rejection is before us for review:
Claims 8-14 are rejected under 35 U.S.C. § 101 because the claimed
invention is directed to non-statutory subject matter. 2
Claims 1---6, 8-15, and 17-22 are rejected under 35 U.S.C. § 101 as
being directed to judicially-excepted subject matter.
2 This rejection, raised in the Non-Final Rejection that has been appealed, is
not mentioned in the Answer. However, we see no statement expressly
withdrawing it. Accordingly, we presume it is being maintained.
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Claims 1---6, 8-15, and 17-22 are rejected on the ground of
nonstatutory double patenting over claims 1-21 of U.S. Patent No.
8,533,094. 3
ISSUES
Did the Examiner err in rejecting claims 8-14 under 35 U.S.C. § 101
because the claimed invention is directed to non-statutory subject matter?
Did the Examiner err in rejecting claims 1---6, 8-15, and 17-22 under
35 U.S.C. § 101 as being directed to judicially-excepted subject matter?
Did the Examiner err in rejecting claims 1---6, 8-15, and 17-22 on the
ground ofnonstatutory double patenting over claims 1-21 of U.S. Patent No.
8,533,094?
ANALYSIS
The rejection of claims 8-14 under 35 U.S.C. § 101 because the claimed
invention is directed to non-statutory subject matter.
The Examiner's position is:
Claims 8-14 directed to an apparatus must be distinguished
from the prior art in terms of structure rather than function. See, e.g.,
In re Danly 263 F.2d 844,847, 120 USPQ 582,531 (CCPA 1959).
3 This rejection appears in the Final Rejection mailed Apr. 25, 2014 and was
indicated as over claims 1-20. An amendment filed July 14, 2015 rendered
the pending claims as claims 1---6, 8-15, and 17-22. Both the Non-Final
Rejection mailed (Jan. 22, 2016) and the Answer mailed (Jan. 17, 2017)
indicate that "[t]he double patenting rejection is maintained" (pages 5 and 2,
respectively). Presumably, the Examiner means to maintain the rejection as
to the currently pending claims 1-6, 8-15, and 17-22.
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A claim containing a "recitation with respect to the manner in
which a claimed apparatus is intended to be employed does not
differentiate the claimed apparatus from a prior art apparatus" if the
prior art apparatus teaches all the structural limitations of the claim.
See, e.g., Ex parte Masham, 2 USPQ2d 1657 (bd Pat. App. & Inter.
1987).
The structural limitations of instant claims 8-14 are interpreted
as computer code per-se and are therefore not statutory subject matter.
Computer code does not fall one of the four statutory classes of
invention.
To overcome this rejection, Applicant could amend the body of
the claim language with "processor and memory combined with
processor ... ".
Non-Final Rej. 5-6.
We will reverse the rejection because we do not understand it. 4 The
rejection is apparently of the "software per se" variety. See MPEP, (Rev. 9,
Aug. 2012; 2106 Patent Subject Matter Eligibility; I. THE FOUR
CATEGORIES OF STATUTORY SUBJECT MATTER; Step 1: "vi. a
computer program per se, Gottschalk v. Benson, 409 U.S. at 72." Our
difficulty is that the Examiner does not adequately explain what precisely is
being "interpreted as computer code per-se." A claim construction analysis
would have been helpful.
Claim 8 calls for a "memory field" that (a) is set up in a memory of a
computer system and (b) configures a processor of the computer system to
perform the recited information "determin[ing]," "select[ing],"
4 Notwithstanding this rejection, later in the Non-Final Action the Examiner
indicates the opposite: that the claimed subject matter is statutory. See page
7: "Each of the method, system and medium claims fall into one of the four
statutory categories of the invention."
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"generat[ing]," and "deliver[ing]" steps. It is not entirely clear from reading
the claim what a "memory field" is. However, when read in light of the
Specification, it apparently refers to a conventional database field.
Para. 22 of the Specification states that "[t]he on-line auction service
500 then sets up the memory field shown in Figure 3 for memory 300 for the
seller and for the item so that when a prospective buyer such as buyer 530
accesses the online auction web site his/her e-mail address is recorded and
stored in memory 300." Emphasis added. Figure 3 shows a box (300) with
particular words (320, 220, 210, 310) in it. Box 300 "can be a conventional
relational database." Para. 20. Accordingly, it follows that "memory field"
refers to a field in database 300. Since a database field is a record or file
within which to place information, that is what the claim term "memory
field" is reasonably broadly construed to encompass.
Thus, when read in light of the Specification, claim 8 is drawn to a
record or file of a conventional database for "determin[ing]," "select[ing],"
"generat[ing]," and "deliver[ing]" the particular types of information recited
in claim 8.
In that light, claim 8 is not necessarily directed to "computer code per-
se."
The rejection is not sustained.
The rejection of claims 1-6, 8-15, and 17-22 under 35 U.S. C. § 1 OJ as
being directed to judicially-expected subject matter.
The Appellant argued these claims as a group. See App. Br. 17-24.
We select claim 1 as the representative claim for this group, and the
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remaining claims 2---6, 8-15, and 17-22 stand or fall with claim 1.37 C.F.R.
§ 4I.37(c)(l)(iv).
Alice Corp. Proprietary Ltd. v. CLS Bank International, 134 S. Ct.
2347 (2014) identifies a two-step framework for determining whether
claimed subject matter is judicially-excepted from patent-eligibility under
35 U.S.C. § 101.
According to Alice step one, "[w]e must first determine whether the
claims at issue are directed to a patent-ineligible concept," such as an
abstract idea. Alice, 134 S. Ct. at 2355.
In that regard, the Examiner determined that
claims 1-6 and 21-22 are directed to a method for delivering sales
leads to a seller. Claims 8-14 are directed to a system for delivering
sales leads to a seller. Claims 15 and 17-20 are directed to a medium
for delivering sales leads to a seller.
Non-Final Rej. 7. The Examiner also made the determination that
"[c]laim(s) 1 [-]6, 8-15, and 17-22 are directed to the abstract idea of online
auctioning." Non-Final Rej. 7.
We are satisfied the Examiner provided sufficient reasoning to put the
Appellant on notice that, under step one of the Alice analytical framework, a
determination has been made that the claim 1 is directed to an abstract idea
because (a) the claim has been characterized as being directed to "online
auctioning" and (b) "online auctioning" is an abstract idea. See 35 U.S.C.
§ 132 which sets forth a more general notice requirement whereby the
applicant is notified of the reasons for a rejection together with such
information as may be useful in judging the propriety of continuing with
prosecution of the application.
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The Appellant understands the Examiner to be taking the position that
claim 1 is directed to "online auctioning." See App. Br. 18 ("the Examiner
merely made conclusory statements that 'the claims are directed to the
abstract idea of online auctioning.'")
However, according to the Appellant, "the claims at issue are [instead]
directed to a particular operations pertaining to selecting a classification of
items based on a correlation between a type of an item and keywords
associated with the classification of items and generating and delivering a
sales leads" (App. Br. 21 ), those operations being
selecting a classification of items stored in a memory of the
computer system based on a correlation between the type of the item
and keywords associated with the classification of items;
generating a sales lead pertaining to the classification of items
for insertion into the memory of the computer system.
Claim 1.
Accordingly, there is a disagreement as to what claim 1 is directed to.
The Appellant understands the Examiner to be taking the position that
"online auctioning" is an abstract idea and understands the Examiner to be
citing Classen Immunotherapies, Inc. v. Biogen IDEC, 659 F.3d 1057 (Fed.
Cir. 2011) and BuySAFE, Inc. v. Google, Inc., 765 F.3d 1350 (Fed. Cir.
2014) in support of that position (see Non-Final Rej. 3). The Examiner
appears to cite these decisions because "the decisional mechanism courts
now apply [to help answer the question of whether online auctioning] 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,"
Amdocs (Israel) Limited v. Openet Telecom, Inc., 841 F.3d 1288, 1294 (Fed.
Cir. 2016).
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The Appellant does not appear to disagree with the Examiner's
position that "online auctioning" per se is an abstract idea. We do not see
that as being in dispute. Cf The Jewelry Channel, Inc. USA d/b/a
Liquidation Channel v. America's Collectibles Network, Inc., 2014 WL
5386840 (PTAB 2014), ajfd, 2017 WL 104471 (Mem) (Fed. Cir. 2017)
("conducting a reverse auction by adjusting the price and available quantities
of units based on monitored preliminary indicators, i.e., characteristics of the
calls and the auction's progress" is an abstract idea) and Priceplay.com, Inc.
v. AOL Advert., Inc., 83 F. Supp. 3d 577 (D. Del. 2015), ajfd, 627 F. App'x
925 (Fed. Cir. 2016) ("[p]erforming a sales transaction over the Internet, or
in conjunction with an auction and a competitive activity" is an abstract
idea).
The Appellant, however, argues that "the cases cited by the Examiner
are either not applicable to the claims at issue in this case or demonstrate
why, contrary to the Examiner's assertion, the claims at issue in this case are
directed to patent-eligible subject matter." App. Br. 19.
[T]he claims recite particular operations pertaining to selecting
a classification of items based on a correlation between a type
of an item and keywords associated with the classification of
items and generating and delivering a sales lead pertaining to
the classification of items . ... [T]he claims at issue in this case
are not directed to an abstract idea------e.g., they put the idea to
practical use.
App. Br. 21.
In other words, the Appellant is arguing that the claims are directed to
"particular operations [as claimed] pertaining to selecting a classification of
items based on a correlation between a type of an item and keywords
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associated with the classification of items and generating and delivering a
sales leads" (App. Br. 21) and those operations are not an abstract idea, thus
claim 1 is not directed to an abstract idea.
Before we can determine whether claim 1 is directed to an abstract
idea, we must first resolve the question of what claim 1 is directed to. Is it
directed to "online auctioning" (Non-Final Rej. 7) or is it directed to
"particular operations [as claimed] pertaining to selecting a classification of
items based on a correlation between a type of an item and keywords
associated with the classification of items and generating and delivering a
sales leads" (App. Br. 21 )?
This question implicates the "directed to" inquiry.
The "directed to" inquiry [] cannot simply ask whether the claims
involve a patent-ineligible concept, because essentially every
routinely patent-eligible claim involving physical products and actions
involves a law of nature and/or natural phenomenon-after all, they
take place in the physical world. See Mayo, 132 S. Ct. at 1293 ("For
all inventions at some level embody, use, reflect, rest upon, or apply
laws of nature, natural phenomena, or abstract ideas.") Rather, the
"directed to" inquiry applies a stage-one filter to claims, considered in
light of the specification, based on whether "their character as a whole
is directed to excluded subject matter." Internet Patents Corp. v.
Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015); see
Genetic Techs. Ltd. v. Merial L.L.C., [] 2016 WL 1393573, at *5 (Fed.
Cir. 2016) (inquiring into "the focus of the claimed advance over the
prior art").
Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016).
With respect to computer-enabled claimed subject matter, it can be
helpful to determine whether "the claims at issue [] can readily be
understood as simply adding conventional computer components to well-
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known business practices" or not. Id. at 1338. See also Affinity Labs of Tex.,
LLC v. DIRECTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016).
In Enfzsh, for example, the court noted that "[ s ]oft ware can make
non-abstract improvements to computer technology just as hardware
improvements can[.]" Id. The court put the question as being "whether the
focus of the claims is on [a] specific asserted improvement in computer
capabilities ... or, instead, on a process that qualifies as an 'abstract idea'
for which computers are invoked merely as a tool." Enfish at 1335-1336. In
Enfish, the court found that the "plain focus of the claims" there was on "an
improvement to computer functionality itself, not on economic or other tasks
for which a computer is used in its ordinary capacity." Id at 1336.
"In determining the eligibility of respondents' claimed process for
patent protection under§ 101, their claims must be considered as a whole."
Diamond v. Diehr, 450 U.S. 175, 188 (1981). The question is whether claim
1 as a whole "focus[ es] on a specific means or method that improves the
relevant technology" or is "directed to a result or effect that itself is the
abstract idea and merely invoke[s] generic processes and machinery."
McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314 (Fed.
Cir. 2016).
where
Claim 1 covers "[a] method comprising" four steps:
"determining" information A;
"selecting" information B;
"generating" information C; and,
"delivering" information D;
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A = "an interest in a type of an item by a prospective buyer based on
an action by the prospective buyer with respect to a screen associated
with the type of the item";
B = "a classification of items ... based on a correlation between the
type of the item and keywords associated with the classification of
items"·
'
C = "a sales lead pertaining to the classification of items"; and,
D = "the sales lead to a seller of at least one of the items included in
the classification of the items." ( emphasis added).
Claim 1 sets forth a series of steps whereby a sales lead for an item a buyer
is interested in is delivered to a seller, the item having been classified
according to a correlation between its type and a keyword. The four steps
employ "a memory of [a] computer system" ( claim 1) which is conventional.
See Spec. para. 20 ("It is to be expressly understood that memory 300 and
400 can be the same memory and that the data fields can be combined
together. In this environment, it can be a conventional relational database.")
The plain focus of the claim is not on any improvement to computer
functionality itself but on tasks for which a generic computer is used in its
ordinary capacity so that various types of information can be "determin[ ed],"
"select[ed]," "generat[ed]," and "deliver[ed]." The different types of
information are distinguished by their content. In particular, they are related
to forming and communicating a sales lead for a classified item.
Accordingly, in this case, claim 1 as a whole is focused not on any asserted
new technology but on using a generic computer to process different types
of information in furtherance of a sales lead for a classified item. Cf In re
TL! Communications LLC Patent Litigation, 823 F.3d 607, 613 (Fed. Cir.
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2016)(the claims' focus "was not on an improved telephone unit or an
improved server.")
In addition, "[t]he 'abstract idea' step of the inquiry calls upon us to
look at the 'focus of the claimed advance over the prior art' to determine if
the claim's 'character as a whole' is directed to excluded subject matter."
Affinity Labs of Texas v. DirectTV, LLC, 838 F.3d at 1257 (quoting Elec.
Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016); see
also Enfish, LLC v. Microsoft Corp., 822 F.3d at 1335, quoted in Apple, Inc.
v. Ameranth, Inc., 842 F.3d 1229, 1241 (Fed. Cir. 2016).
In that regard, the Specification states that "[t]he present invention
relates to online auctioning." Para. 2. The Background section of the
Specification discusses the problem, which is that "[a] need exists to provide
a service to retail sales organizations that use online auction services to
generate sales leads." Para. 6. According to the Specification, the inventor
solved the problem "by providing a unique and novel method for generating
sales leads based upon not only actual bidders to an item being auctioned but
also to those prospective bidders that visit the web page for an item being
auctioned." Para. 7.
In light of Specification's description of the problem and solution, the
advance over the prior art by the invention is in generating sales leads based
on prospective bidders in the context of online auctions. This is the heart of
the invention. Cf Intellectual Ventures I LLC v. Erie Indemnity Company,
850 F.3d 1315, 1328 (Fed. Cir. 2017)("the heart of the claimed invention lies
in creating and using an index to search for and retrieve data . . . an abstract
concept.")
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However, notwithstanding the heart of the invention is in generating
sales leads based on prospective bidders in the context of online auctions,
claim 1 is not limited to online auctions. "The § 101 inquiry must focus on
the language of the Asserted Claims themselves." Synopsys, Inc. v. Mentor
Graphics Corp., 839 F.3d 1138, 1149 (Fed. Cir. 2016). See Accenture
Global Servs., GmbH v. Guidewire Software, Inc., 728 F.3d 1336, 1345
(Fed. Cir. 2013) (admonishing that "the important inquiry for a§ 101
analysis is to look to the claim"); see also Content Extraction &
Transmission LLC v. Wells Fargo Bank, Nat'! Ass'n, 776 F.3d 1343, 1346
(Fed. Cir. 2014) ("We focus here on whether the claims of the asserted
patents fall within the excluded category of abstract ideas.").
Accordingly, the Examiner's characterization of the claims as being
directed to "online auctioning" (Non-Final Rej. 7) is inaccurate. Although
such a characterization reflects the heart of the invention, it does not reflect
what claim 1 recites. In fact, "online auctioning" is not mentioned in claim
1, or in any other claim on appeal.
By contrast, the Appellant's characterization of what the claims are
directed to (i.e., "particular operations [as claimed] pertaining to selecting a
classification of items based on a correlation between a type of an item and
keywords associated with the classification of items and generating and
delivering a sales leads" (App. Br. 21 )) more closely aligns to what the
claims are reasonably characterized as being "directed to" (i.e., on tasks for
which a generic computer is used in its ordinary capacity so that various
types of information can be "determin[ed]," "select[ed]," "generat[ed]," and
"deliver[ed]"). The Appellant's characterization is simply at a lower level of
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abstraction. See Apple, Inc. v. Ameranth, Inc., 842 F.3d 1240-1241 ("An
abstract idea can generally be described at different levels of abstraction. As
the Board has done, the claimed abstract idea could be described as
generating menus on a computer, or generating a second menu from a first
menu and sending the second menu to another location. It could be described
in other ways, including, as indicated in the specification, taking orders from
restaurant customers on a computer.")
We now tum to the question of whether claim 1 is "directed to" an
abstract idea.
When "the focus of the asserted claims" is "on collecting information,
analyzing it, and displaying certain results of the collection and analysis,"
the claims are directed to an abstract idea. Elec. Power Grp., LLC v. Alstom
S.A., 830 F.3d at 1343. Since "[d]etermining," "selecting," "generating," and
"delivering" information is analogous to collecting, analyzing and displaying
information, it follows that the "determining," "selecting," "generating," and
"delivering" information concept to which claim 1 is directed to is an
abstract idea.
Even when limited to particular content, information collection,
analysis, and displaying remains within the realm of abstract ideas. Thus,
notwithstanding that, in order to form and communicate a sales lead for a
classified item, claim 1 calls upon certain types of information to be
"determin[ed]," "select[ed]," "generat[ed]," and "deliver[ed]", the abstract
nature of the concept remains unchanged. See SAP America, Inc. v.
Investpic, LLC, 898 F.3d 1161, 1167 (Fed. Cir. 2018) ("Contrary to
InvestPic's suggestion, it does not matter to this conclusion whether the
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information here is information about real investments. As many cases make
clear, 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." (Quoting Electric Power Group,
LLC v. Alstom S.A., 830 F.3d at 1355 (citing cases).).) Also, Praxair
Distribution, Inc. v. Mallinckrodt Hospital Products IP Ltd., 890 F.3d 1024,
1032 (Fed. Cir. 2018)("[ c ]laim limitations directed to the content of
information and lacking a requisite functional relationship are not entitled to
patentable weight because such information is not patent eligible subject
matter under 35 U.S.C. § 101.")
For the foregoing reasons, the claims are directed to the abstract idea
of "determining," "selecting," "generating," and "delivering" information
(via a generic computer used in its ordinary capacity). Accordingly, while
we agree with the Appellant's suggestion that the Examiner's
characterization of what the claims are directed to is incorrect, the claims are
still directed to an abstract idea even under a more reasonable
characterization. For that reason, we are unpersuaded as to error in the
Examiner's determination that claim 1 is directed to an abstract idea.
We now tum to the second step in the analytical framework.
Step two is "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."' Alice, 134 S. Ct. at 2355 (quoting Mayo Collaborative
Servs. v. Prometheus Labs., Inc., 566 US 66, 73 (2012)).
In that regard, the Examiner determined that
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[t]he claim(s) does/do not include additional elements that are
sufficient to amount to significantly more than the judicial exception,
because the additional elements are simply a generic recitation of a
computer and a computer network performing their generic computer
functions. The Applicant's specification states the following:
[0021] In Figure 5, the block diagram environment showing the
implementation of the method of the present invention is
generally set forth. It is well within the skill of the art to set up
Internet businesses including on-line auction services. An on-
line auction service 500 is shown interconnected to a
communications network 510 over connection 520. The
communication network 510 can comprise many different
components and is essentially transparent to the on-line auction
service 500. Also connected to the communication network 510
is at least one prospective buyer 530 in communication with the
network over communication link 540 and at least one seller
550 also in communication with the network 510 over
communication link 560. Typically, the prospective buyer 530
and the seller 550 have home based or office based personal
computers which are readily available from a large number of
sources. Each computer system 530 and 550 is conventionally
interconnected to the network 510 over a suitable
communication device such as a modem or a DSL line 540,
560.
The claims amount to no more than stating determining,
selecting, generating, and delivering on a computer and send it over a
network.
Taking the elements both individually and as a combination, the
computer components in claims 1-6, 8-15, and 17-22 perform purely
generic computer functions. The independent and dependent claims as
a whole do not amount to significantly more than the abstract idea
itself.
Non-Final Rej. 8.
The Appellant argues:
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The claims at issue recite setting up of one or more memory fields in a
memory of one or more computer systems, the one or more memory
fields configuring one or more processors of the one or more
computer systems to perform various operations. The recited
operations cannot be performed by a generic computer, such as a
computer for which the memory fields are not set up to configure the
one or more processors to perform the recited operations. . . . [T]he
claims at issue in this case are directed to a computer-centric problem
and have a solution that is necessarily in computer technology. For
example, the claims at issue me directed to providing a sales lead to a
seller of an item included in a classification of items stored in a
memory of a computer system based on an action of a prospective
buyer with respect to a user interface screen associated with a type of
an item and a correlation between the type of the item and keywords
associated with the classification of items, which is a technique that is
not only rooted in computer technology, but is one that the Examiner
has conceded is novel and non-obvious over the prior art.
App. Br. 22-23.
The argument is not commensurate in scope with what is claimed. We
see nothing in the claim about "setting up of one or more memory fields" "to
configure the one or more processors to perform the recited operations."
Claim 1 mentions "memory" but simply to store information. See
claim 1 ("selecting [information] stored in a memory"; "generating
[information] for insertion into the memory"; and "delivering including
transferring [information] from the memory of the computer system to a
memory of a machine of the seller"). Not only does the Specification (para.
20) expressly disclose "memory fields" as conventional means for storing
information, but storing information in memory is itself an abstract idea.
Without more, the claim recitations of "memory" for performing its common
storing function are insufficient to add anything significant to the
"determining," "storing," "generating," and "delivering" abstract idea so as
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to transform the abstract idea into an inventive concept. Cf In re TL!
Commc'ns, 823 F.3d at 611 ("the abstract idea of classifying and storing
digital images in an organized manner.")
We have carefully considered the Appellant's arguments presented in
the Briefs. The difficulty here is that claim 1 has been drafted so that as a
whole it provides no more than a result-oriented solution ("determining,"
"storing," "generating," and "delivering") without any of the computer-
centric details necessary for accomplishing it. The Appellant suggests such
details in arguing over "setting up" "memory fields." But claim 1 does not
now reflect those details. Cf Intellectual Ventures I LLC v. Capital One Fin.
Corp., 850 F.3d 1332, 1342 (Fed. Cir. 2017) (explaining that "[o]ur law
demands more" than claim language that "provides only a result-oriented
solution, with insufficient detail for how a computer accomplishes it") and
Elec. Power Grp., 830 F.3d at 1354 (explaining that claims are directed to an
abstract idea where they do not recite "any particular assertedly inventive
technology for performing [ conventional] functions"). As claimed, the
"memory" "is merely a conduit for the abstract idea" (In re TL! Commc'ns,
823 F.3d at 612).
We have considered all of the Appellant's remaining arguments,
including those pertaining to the dependent claims (App. Br. 23) and those
made in the Reply Brief, and find them unpersuasive. Accordingly, because
we are not persuaded as to error in the determinations that representative
claim 1, and claims 2---6, 8-15, and 17-22 which stand or fall with claim 1,
are directed to an abstract idea and do not present an "inventive concept,"
we sustain the Examiner's conclusion that they are directed to patent-
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Appeal2017-006607
Application 14/022,003
ineligible subject matter for being judicially-excepted from 35 U.S.C. § 101.
Cf LendingTree, LLC v. Zillow, Inc., 656 Fed.Appx. 991, 997 (Fed. Cir.
2016)("We have considered all of Lending Tree's remaining arguments and
have found them unpersuasive. Accordingly, because the asserted claims of
the patents in suit are directed to an abstract idea and do not present an
'inventive concept,' we hold that they are directed to ineligible subject
matter under 35 U.S.C. § 101."); see also, e.g., OIP Technologies, Inc. v.
Amazon.com, Inc., 788 F.3d 1359, 1364 (Fed. Cir. 2015) and Fair Warning
IP, LLC v. Iatric Systems, Inc., 839 F.3d 1089, 1098 (Fed. Cir. 2016).
The rejection of claims 1-6, 8-15, and 17-22 on the ground of nonstatutory
double patenting over claims 1-21 of U.S. Patent No. 8,533,094.
The Appellant does not appear to have responded to this rejection.
Accordingly, it is summarily affirmed.
CONCLUSIONS
Claims 8-14 are rejected under 35 U.S.C. § 101 because the claimed
invention is directed to non-statutory subject matter is reversed.
Claims 1---6, 8-15, and 17-22 are rejected under 35 U.S.C. § 101 as
being directed to judicially-excepted subject matter is affirmed.
Claims 1---6, 8-15, and 17-22 are rejected on the ground of
nonstatutory double patenting over claims 1-21 of U.S. Patent No.
8,533,094 is affirmed.
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Appeal2017-006607
Application 14/022,003
DECISION
The decision of the Examiner to reject claims 1---6, 8-15, and 17-22 is
affirmed.
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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