Ex Parte English et al

Patent Trial and Appeal Board

Oct 1, 2018

14210807 (P.T.A.B. Oct. 1, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/210,807 03/14/2014
22908 7590 10/03/2018
BANNER & WITCOFF, LTD.
TEN SOUTH WACKER DRIVE
SUITE 3000
CHICAGO, IL 60606
FIRST NAMED INVENTOR
Paul M. English
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.
007985.00283 8562
EXAMINER
JACOB, AJITH
ART UNIT PAPER NUMBER
2161
NOTIFICATION DATE DELIVERY MODE
10/03/2018 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):
eofficeaction@bannerwitcoff.com
PTOL-90A (Rev. 04/07)
UNITED ST ATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PAUL M. ENGLISH, DEREKM. YOUNG,
JEFF A. RAGO, LINCOLN D. JACKSON, PAUL D. SCHWENK,
and GIORGOS C. ZACHARIA
Appeal2018-002862
Application 14/210,807
Technology Center 2100
Before MAHSHID D. SAADAT, ALLEN R. MacDONALD, and
JOHN P. PINKERTON,Administrative Patent Judges.
SAADAT, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1-7. We have jurisdiction under 35 U.S.C. § 6(b).
We affrrm.
1 According to Appellants, the real party in interest is Kayak Software
Corporation. App. Br. 2.
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Application 14/210,807
STATEMENT OF THE CASE
Appellants' invention relates to a travel search engine and to sharing
search results with users. Spec. ,r 2. Exemplary claim 1 under appeal reads
as follows:
1. A computer program product compnsmg a computer
readable storage medium having computer program instructions
and data embodied thereon for displaying on a display device
shared search results in a user interface, the computer program
instruction and data to configure a processor to perform
operations comprising:
presenting on the display device in a frrst portion of the
user interface, a set of search results from a search session to a
frrst user, each search result in the set including a user interface
control to share the search result with another user; and
responsive to a request from the frrst user to share a
selected search result from the set of search results with a second
user, presenting the selected search result on the display device
in a second portion of the user interface separate from the frrst
portion, while removing the selected search result from the set of
search results displayed in the frrst portion of the user interface.
REFERENCES and REJECTIONS
Claims 1-7 stand rejected under 35 U.S.C. § 101 as not being directed
to patent-eligible subject matter. See Final Act. 2.
Claims 1-7 standrejectedunder35 U.S.C. § 102(b)as being
anticipated by Delj o (US 2007/0112606 Al; published May 17, 2007)
("Deljo"). See Final Act. 2--4.
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PRINCIPLES OF LAW
Patent-Eligible Subject Matter
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
Corp. Pty. Ltd. v. CLS Bankint'l, 134 S. Ct. 2347, 2355 (2014) (citing Mayo
Collaborative Services v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1294
(2012)). According to this framework, a determination is made to consider
whether the claims at issue are directed to one of those concepts (i.e., laws of
nature, natural phenomena, and abstract ideas). See id. If so, a further
determination must be made to consider the elements of each claim both
individually and "as an ordered combination" to determine whether the
additional elements "transform the nature of the claim" into a patent-eligible
application. Id. "The question of whether a claim element or combination
of elements is well-understood, routine and conventional to a skilled artisan
in the relevant field is a question of fact." Berkheimerv. HP Inc.,
881 F.3d 1360, 1368 (Fed. Cir. 2018).
Anticipation
"A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference." VerdegaalBros. v. Union Oil Co. of California,
814 F.2d628, 631 (Fed. Cir. 1987). The elements must be arranged as
required by the claim, but this is not an ipsissimis verb is test, i.e., identity of
terminology is not required. In re Bond, 910 F.2d 831 (Fed. Cir. 1990).
Under 35 U.S. C. § 102, the prior art reference "must not only disclose all
elements of the claim within the four comers of the document, but must also
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disclose those elements arranged as in the claim." Net Money In, Inc. v.
Verisign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008) (citation and internal
quotation marks omitted). "Thus, it is not enough that the prior art reference
discloses part of the claimed invention, which an ordinary artisan might
supplement to make the whole, or that it includes multiple, distinct teachings
that the artisan might somehow combine to achieve the claimed invention."
Id. at 1371.
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellants'
arguments that the Examiner erred. We are not persuaded the Examiner
erred in rejecting the claims under 35 U.S.C. § 101 for being directed to
patent-ineligible subject matter, and we adopt as our own the findings and
reasons set forth by the Examiner. See Final Act. 2; see also Ans. 2-3. We,
however, are persuaded the Examiner erred in rejecting the claims under
35 U.S.C. § 102(b)as anticipated byDeljo. We highlight and address
specific findings and arguments for emphasis as follows.
Rejection Under35 USC§ 101
Independent claim 1 recites a computer readable storage medium
having computer program instructions and data embodied thereon for
displaying on a display device shared search results in a user interface, and
is, therefore, directed to one of the four statutory categories of patentability
enumerated by 35 U.S.C. § 101 (process, machine, manufacture, or
composition of matter). Applying the frrst part of the Alice analysis, the
Examiner fmds the claims are directed to an abstract idea under an idea "of
itself'. See Ans. 2. As found by the Examiner, the claims present steps for
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displaying search results on a user interface for a searching user, presenting
options to only show a portion of the results based on the selection, and
sharing the selected search results (e.g., travel itineraries) with a third-party.
See id. As further found by the Examiner, the basic steps of gathering
information for display, analyzing the information, and displaying the
information based on user filtration to users are broadly covered under
Electric Power Group, LLCv. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016)
( collecting information, analyzing the collected information, and displaying
certain results of the collection and analysis) and Intellectual Ventures I LLC
v. Capital One Financial Corp., 850 F.3d 1332 (Fed. Cir. 2017) (collecting,
displaying, and manipulating data). See Ans. 2-3. Applying the second part
of the Alice analysis, the Examiner finds the claims do not include additional
elements that are sufficient to amount to significantly more than the abstract
idea. See Final Act. 2. As found by the Examiner, the claims do not:
provide any solution to a technical challenge; provide a combination of
features that are significantly more than the abstract idea in any non-
conventional manner; or provide any new improvement in functionality to
an underlying travel search system. See Ans. 3. As further found by the
Examiner, the claim elements are well-known and conventional elements for
performing routine and conventional functions. See id. Further, the
Examiner has indicated that, in addition to independent claim 1, the
dependent claims have been carefully reviewed but merely recite additional
features of the abstract idea and do not recite additional elements that are
significantly more than the abstract idea. See id.
Beginning with the frrst step of the Alice analysis, we must determine
"whether the claims at issue are directed to one of those patent-ineligible
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concepts," including abstract ideas. Alice, 134 S. Ct. at 2355. In performing
this determination, we ask 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, LLCv. Microsoft Corp., 822 F.3d 1327, 1335-36
(Fed. Cir. 2016) (citing Alice, 134 S. Ct. at 2358-59).
Appellants argue the Examiner fails to address the actual limitations
of independent claim 1 (e.g. , "frrst portion of the user interface," "second
portion of the user interface separate from the frrst portion"), does not even
attempt to suggest what "idea" the claim is believed to be directed to, fails to
specify what claim limitations are believed to correspond to any purported
"categories," and fails to consider claim 1 as a whole in assessing whether
claim 1 recites patent-eligible subject matter. See App. Br. 3---6. Appellants
further argue claim 1 is rooted in Internet-based computingtechnology (i.e.,
online search engines), addresses a problem specifically arising from this
computing technology (i.e., sharingonline travel search results between two
users seeking to travel together but searching for travel options from
different computers), and recites specific interactions with the user interface
used to present and browse the travel search results (i.e., presenting travel
search results in one portion of the user interface while presenting travel
search results to be shared with another user in another portion of the user
interface), and thus, the claims are similar to the claims at issue in DDR
Holdings, LLCv. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014). See
App. Br. 6-10. Appellants also argue claim 1 is similar to the claims found
patent-eligible in Trading Technologies International Inc. v. CQG, Inc.,
675 Fed. Appx. 1001 (Fed. Cir. 2017), as claim 1 analogously recites
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specific user interface features and associated functionality for improving
collaboration between users of online travel search engines. See App.
Br. 13-14.
We are not persuaded by Appellants' arguments. Considering the
recited elements of the claims in light of Appellants' Specification, we agree
with the Examiner's findings that the claims are directed to a computer
program product comprising a computer-readable storage medium having
computer program instructions and data embodied thereon for displaying
search results (e.g., travel itineraries) on a user interface for a searching user,
presenting a portion of the results based on a selection, and sharing the
selected search results with a third-party. See Ans. 2. We further agree with
the Examiner that the recited steps can be performed mentally, and thus, the
claims are directed to "an idea of itself," one of the four types of abstract
ideas set forth in Alice. See id; see also Alice, 134 S. Ct at 2355 ("[a]n idea
of itself is not patentable"). Although the claims recite that the steps are
performed on a user interface of a display device, such a recitation does not
necessarily mean that the recited steps are not mental steps, as "the mere
recitation of a generic computer cannot transform a patent-ineligible abstract
idea into a patent-eligible invention." Alice, 134 S. Ct at 2358. Based on the
recited elements, the claims are directed to collecting search result
information, analyzing the collected information, and displaying the
analyzed information, which is an idea of itself and which is similar to
abstract ideas previously identified by courts. See Electric Power Grp,
830 F.3d at 1353-54 ( claims focus on the abstract idea of collecting
information, analyzing it, and displaying certain results of the collection and
analysis); see also Intellectual Ventures, 850 F.3d at 1327 (affrrming thatthe
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invention is drawn to the abstract idea of"creating an index and using that
index to search for and retrieve data").
Further, we disagree with Appellants' argument that the Examiner has
failed to set forth a pri ma faci e case that claim 1 is patent ineligible. As
described above, the Examiner has characterized claim 1 and analogized it to
previous court cases holding that a claim is patent ineligible for being
directed to an abstract idea. See Ans. 2-3. As this point, the Examiner has
shifted the burden to Appellants to persuasively establish that claim 1 is not
directed to an abstract idea. Although Appellants identify claim elements,
such as "first portion of the user interface" and "second portion of the user
interface separate from the frrst portion," Appellants fail to persuasively
establish how the recited claim elements demonstrate that claim 1 is not
directed to an abstract idea.
Appellants' argumentthat claim 1 is similar to the claims in DDR
Holdings, is also not persuasive because Appellants provide no persuasive
analysis or explanation as to why the claims are similar to the claims at issue
in DDR Holdings. More specifically, the scope of claim 1 is not
commensurate with the argued improvement of sharing travel search results
between two users searching for travel itineraries from different computers.
In fact, claim 1 merely recites removing a presented search result from a frrst
portion of a user interface corresponding to a display device and presenting
the search result in a second portion of the user interface in response to a
request to share the search result with an additional user. Claim 1 fails to
recite any details regarding the specifics of sharing the search result with the
other user or displaying the shared search result in another user interface
corresponding to another display device. In contrast, in DDR Holdings, the
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court determined that the claims at issue require "that a 'data store' hold
'visually perceptive elements' ( or 'look and feel elements') that 'visually ...
correspond' to a host page" and further require "that the data store must store
'look and feel' descriptions for multiple hosts," "that each link must be
associated with a particular merchant's product catalog," and "that the
merchant, system operator, and host website be 'third parties with respect to
one another."' DDR Holdings, 773 F.3d at 1250. Thus, the court determined
that the claims included sufficiently detailed elements that established the
claims were necessarily rooted in computer technology and addressed the
Internet-centric problem of how to provide user access to computer-
implemented applications overthe Internet. DDRHoldings, 773 F.3dat
1257.
Further, Appellants' argument that claim 1 is similar to the claims in
Trading Technologies is also not persuasive. As previously described, the
scope of claim 1 is not commensurate with the argued improvement of
collaboration between users of online travel search engines, as claim 1 lacks
specific features and associated functionality for the argued improvement.
More specifically, claim 1 merely recites removing the search result from the
frrst portion of the user interface and presenting the search result in the
second portion of the user interface in response to a request to share the
search result. Such claim recitations merely describe displaying information
within a graphical user interface in response to a request, and do not
sufficiently describe how collaboration between users is improved by
displaying search results within different user interfaces of multiple display
devices. In contrast, in Trading Technologies, the court determined that the
claims did not "simply claim displaying information on a graphical user
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interface," but rather "require[ d] a specific, structured graphical user
interface with a prescribed functionality directly related to the graphical user
interface's structure," and it was the specifically structured graphical user
interface with prescribed functionality that "addressed ... and [ resolved] a
specifically identified problem in the prior state of the art." Trading
Technologies, 675 Fed. Appx at 1004.
Because we conclude that the claims are directed to an abstract idea,
we tum to the next step of the Alice analysis. In step two, as previously
discussed, we consider the elements of the claims "individually and 'as an
ordered combination'" to determine whether the additional elements
"'transform the nature of the claim' into a patent-eligible application."
Alice, 134 S. Ct. at 2355 (quoting Mayo, 566 U.S. at 78).
In that regard, Appellants argue claim 1 is similar to the claims found
patent-eligible in Amdocs Ltd. v. Opnet Telecom, Inc., 841 F.3d 1288
(Fed. Cir. 2016) because claim 1 recites specific structures and functions for
achieving the goal of sharing, with another user, search results provided by a
search session. See App. Br. 10-11. Appellants further argue claim 1 is also
similar to claims found patent-eligible in BASCOM Global Internet Services,
Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016) because claim 1
amounts to significantly more than the alleged abstract idea of "sharing user
results in a user interface," as its explicitly recited combination and
arrangement of claim features is non-conventional and non-generic, and
thus, transforms claim 1 into a patent-eligible application of the abstract
idea. See App. Br. 11-12.
We are not persuaded that the Examiner erred. Considering the
recited elements of the claims in light of Appellants' Specification, we agree
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with the Examiner's fmdings that the claimed elements (i.e. , presenting
search results on a frrst portion of a user interface, removing a selected
search result from the frrst portion of the user interface in response to a
request from a user, and presenting the selected search result in a second
portion of the user interface in response to the request from the user) are
well-known and conventional elements for performing routine and
conventional functions performed by conventional graphical user interfaces.
See Ans. 3. Evidence supporting the Examiner's fmding is found in the
Deljo reference, further discussed below, which discloses removing a
selected itinerary from a displayed list of itineraries (i.e., the claimed "frrst
portion of [a] user interface") and presenting the selected itinerary in a flight
details window (i.e., the claimed "second portion of the user interface") in
response to a request from a user. See e.g., Deljo ,r,r 22-24. Therefore,
considering the elements of the claims both individually and in combination,
we conclude there are no additional elements that transform the nature of the
claims into a patent-eligible application. See Alice, 134 S. Ct. at 2355.
Further, we disagree with Appellants' contention that claim 1 is
directed to a specific combination of features in a specific arrangement for
sharing search results between users, similar to the claims at issue in
Amdocs, rather than an abstract idea. Contrary to Appellants' argument,
claim 1 does not recite specific structures and functions for achieving the
argued goal of sharing search results with another use during a search
session. As previously described, claim 1 merely recites the structures "frrst
portion of the user interface" and "second portion of the user interface," and
merely recites removing a search result from the frrst portion of the user
interface and presenting it in the second portion of the user interface in
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response to a request to share the search result. Further, claim 1 fails to
recite any details regarding the specifics of sharing the search result with the
other user or displaying the shared search result in another user interface
corresponding to another display device. In contrast, in Amdocs, the patent
claims recited that the network accounting records were "enhance[ d],"
where the court construed "enhance" as being dependent upon a distributed
architecture disclosed in the patent. See Amdocs, 841 F. 3 d at 13 00. Thus,
claim 1 fails to recite Appellants' argued inventive concept.
Further, Appellants' argument that claim 1 is similar to the claims in
BASCOM is also not persuasive. Contrary to Appellants' argument, claim 1
does not recite a non-conventional and non-generic combination and
arrangement of claim features. As previously described, claim 1 fails to
recite any specific structures or other details regarding the specifics of
sharing the search result with the other user or displaying the shared search
result in another user interface corresponding to another display device. In
contrast, in BASCOM, the patent claims respectively recited a "content
filtering system for filtering content retrieved from an Internet computer
network," and "ISP server for filtering content," where the patent described
the installation of a filtering tool at a specific location, remote from end-
users, with customizable filtering features specific to each end user. See
BASCOM, 827 F.3d at 1348-50. Thus, claim 1 fails to recite Appellants'
argued inventive concept.
We have considered Appellants' other arguments (see e.g., Reply
Br. 2-8) and they are also not persuasive. Therefore, we are not persuaded
the Examiner erred in fmding claims 1-7 reciting patent-ineligible subject
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matter. Accordingly, we sustain the rejection of claims 1-7 under
35 U.S.C. 101.
Rejection Under 35 USC§ 102(b)
Appellants contend Deljo fails to disclose "responsive to a request
from the frrst user to share a selected search result from the set of search
results with a second user, presenting the selected search result on the
display device in a second portion of the user interface separate from the
frrst portion, while removing the selected search result from the set of search
results displayed in the frrst portion of the user interface," as recited in claim
I. See App. Br. 15. As argued by Appellants, Deljo discloses a system that
groups and displays travel itineraries. See id. Although Deljo discloses that
itinerary information can be shared by selecting a "Send via Email" link or
"Send via IM" link, according to Appellants, Deljo does not explain what is
presented when a user clicks either of the aforementioned links. See
App. Br. 16. As further argued by Appellants, Deljo also discloses that a
presentation of a selected itinerary in a flight details window occurs in
response to selecting a "return times" link, not in response to selecting the
"Send via Email" link or the "Send via IM" link. See id. Thus, even
assuming without conceding that Deljo's list of collapsible itineraries and
flight details window could be construed as the respectively claimed "frrst
portion of the user interface" and "second portion of user interface,"
Appellants argue Deljo fails to disclose that an itinerary is removed from the
list of collapsible itineraries and displayed within the flight details window
in response to a request to share the itinerary. See App. Br. 17-18; see also
Reply Br. 8-12.
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We are persuaded by Appellants' contentions. Although we agree
with the Examiner that Delj o discloses removing a selected itinerary from a
displayed list of itineraries (i.e., the claimed "first portion of [a] user
interface") and presenting the selected itinerary in a flight details window
(i.e., the claimed "second portion of the user interface"), we are persuaded
by Appellants' argument that the Examiner has not shown Delj o discloses
removing the selected itinerary from the displayed list and presenting the
selected itinerary in the flight details window in response to a user
requesting to share the selected itinerary by either selecting the "Send via
Email" link or the "Send via IM" link. Therefore, on this record, we do not
sustain the rejection of claim 1 under 35 U.S.C. § 102(b ), nor of claims 2-7
which depend from claim 1.
DECISION
We affrrm the Examiner's rejection of claims 1-7 under35 U.S.C.
§ 101.
We reverse the Examiner's rejection of claims 1-7 under 35 U.S.C.
§ 102(b).
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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