Ex Parte Fraser et al

Patent Trial and Appeal Board

Oct 19, 2018

13835430 (P.T.A.B. Oct. 19, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/835,430 03/15/2013
101373 7590 10/23/2018
Eversheds Sutherland (US) LLP / CEI
999 Peachtree Street
Suite 2300
Atlanta, GA 30309
FIRST NAMED INVENTOR
Alexander Harley Fraser
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.
26454-0090 7390
EXAMINER
MISIASZEK, MICHAEL
ART UNIT PAPER NUMBER
3625
NOTIFICATION DATE DELIVERY MODE
10/23/2018 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):
patentdocket@eversheds-sutherland.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ALEXANDER HARLEY FRASER,
JOHN BLOBNER, LANCE RIGDON,
KRISTA GAYLE WRIGHT, VERONICA YUNG SU TAI,
RICHARD NEIL MACCONNELL, and
AMY ANDREWS MILLS
Appeal2017-006219
Application 13/835,430
Technology Center 3600
Before HUNG H. BUI, JOYCE CRAIG, and AARON W. MOORE,
Administrative Patent Judges.
CRAIG, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
Non-Final Rejection of claims 1-10, which are all of the claims pending in
this application. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 According to Appellants, the real party in interest is Manheim Investments,
Inc. App. Br. 1.
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Application 13/835,430
INVENTION
Appellants' invention relates to live auctioneer led sales of products
between remotely located buyers, sellers, and auctioneers. Spec., Abstract.
Claim 1 is illustrative and reads as follows:
1. A method, comprising:
receiving, by one or more computers comprising one or
more processors, information associated with one or more
vehicles in a seller's inventory;
providing over a network, by the one or more computers,
the information associated with the one or more vehicles in the
seller's inventory for display to one or more buyer computing
devices;
receiving, by the one or more computers, an indication of
an interest to purchase at least one of the one or more vehicles in
the seller's inventory from the one or more buyer computing
devices, wherein the interest to purchase the at least one vehicle
comprises a request to offer the at least one vehicle up for sale at
a virtual auction;
identifying, by the one or more computers and based at
least in part on the interest to purchase the at least one vehicle, a
virtual auction to sell the at least one vehicle;
placing, by the one or more computers and based at least
in part on the interest to purchase the at least one vehicle, the at
least one vehicle in the identified virtual auction;
conducting, by the one or more computers, a live virtual
auction of the at least one vehicle, wherein the live virtual auction
comprises a signal indicative of a live auctioneer conducting a
sale of the at least one vehicle by auction from an auctioneer
computing device, wherein the signal comprises one or more of
a real-time audio signal, a video signal, or a combination thereof
of the live auctioneer conducting the sale of one of the at least
one vehicle by virtual auction;
providing, by the one or more computers, the signal
indicative of the live auctioneer conducting the sale of one of the
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at least one vehicle by virtual auction to the one or more buyer
computing devices, wherein at least one of the auctioneer
computing device, the one or more buyer computing devices, and
the at least one vehicle are geographically remotely located from
one another;
receiving, by the one or more computers, one or more bids
for the at least one vehicles from the one or more buyer
computing devices;
providing, by the one or more computers during the
bidding process, a virtual ringman comprising a pop up window
or a float-over element that identifies one or more features of
interest associated with the vehicle up for virtual auction,
wherein the virtual ringman is customizable;
receiving, by the one or more computers, an indication
from the auctioneer computing device that bidding is over; and
enabling, by the one or more computers, the live
auctioneer to ( 1) sell the car based on one of the one or more bids
or (2) open the virtual auction back up for bidding.
REJECTION
Claims 1-10 stand rejected under 35 U.S.C. § 101 because the
claimed invention is directed to a judicial exception to patentability, without
significantly more. Non-Final Act. 3-5.
ANALYSIS
We have reviewed the rejections of claims 1-10 in light of
Appellants' arguments that the Examiner erred. We have considered in this
decision only those arguments Appellants actually raised in the Briefs. Any
other arguments Appellants could have made, but chose not to make, in the
Briefs are waived. See 37 C.F.R. § 4I.37(c)(l)(iv).
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Appellants' arguments are not persuasive of error. We agree with and
adopt as our own the Examiner's findings of fact and conclusions as set forth
in the Answer (Ans. 4--8) and in the Action (Non-Final Act. 3-5) from
which this appeal was taken. We provide the following explanation for
emphasis.
Under 35 U.S.C. § 101, 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 an implicit exception: "[l]aws of nature, natural phenomena, and
abstract ideas" are not patentable. See, e.g., Alice Corp. Pty Ltd. v. CLS
Bank Int'!, 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. Alice, 134 S. Ct. at 2355 (citing Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 566 U.S. 66, 76-77 (2012)).
In accordance with that framework, we first determine whether the
claim is "directed to" a patent-ineligible abstract idea. See id. at 2356.
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. Id. at
2355. This is a search for an "inventive concept"-an element or
combination of elements sufficient to ensure that the claim amounts to
"significantly more" than the abstract idea itself. Id. (internal quotations and
citation omitted). The Court acknowledged in Mayo that "all inventions at
some level embody, use, reflect, rest upon, or apply laws of nature, natural
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phenomena, or abstract ideas." Mayo, 566 U.S. at 71. We, therefore, look
to whether the claims focus on a specific means or method that improves the
relevant technology or are instead directed to a result or effect that itself is
the abstract idea and merely invoke generic processes and machinery. See
Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016).
In rejecting independent claims 1 and 10, and dependent claims 2-9,
under 35 U.S.C. § 101, the Examiner determined the claims are directed to
an abstract idea of "conducting an auction," i.e., a "fundamental economic
practice." Non-Final Act. 3--4. The Examiner also determined the claims as
a whole do not amount to significantly more than the abstract idea itself. Id.
at 4--5. In particular, the Examiner determined the Specification sets forth
that the technological elements recited by the claims are generic, that there is
no indication those elements, when considered in combination, move beyond
a generic networked environment, and that the claims do not set forth the
specific technical functions required to perform each of the claimed
operations. Id. at 4. The Examiner concluded the additional elements
merely link the abstract idea of conducting an auction to the recited generic
technological environments, and do not amount to significantly more than
the abstract idea. Id. at 4--5.
Appellants first contend the Examiner did not make a prima facie case
of patent ineligibility because the Examiner failed to provide "any
evidentiary support for the allegation that the claims are directed to any
abstract idea." App. Br. 4 (citing Ex parte Poisson, Appeal 2012-011084
(PTAB Feb. 26, 2015)).
We disagree. Patent eligibility under 35 U.S.C. § 101 is a question of
law that is reviewable de nova. See Dealertrack, Inc. v. Huber, 674 F.3d
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1315, 1333 (Fed. Cir. 2012). We are aware ofno controlling authority that
requires the Office to provide factual evidence under step one of the Alice
framework to support a determination that a claim is directed to an abstract
idea. Nor, contrary to Appellant's suggestion (App. Br. 4), did this Board
hold in Ex parte Poisson that there is any such requirement. Instead, the
Federal Circuit has repeatedly noted that "the prima facie case is merely a
procedural device that enables an appropriate shift of the burden of
production." Hyatt v. Dudas, 492 F.3d 1365, 1369 (Fed. Cir. 2007) (citing
In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992)).
The Examiner satisfies the burden of establishing a prima facie case
under 35 U.S.C. § 132 by setting forth a rejection in a sufficiently articulate
and informative manner. In re Jung, 637 F.3d 1356, 1363 (Fed. Cir. 2011).
If the Examiner "adequately explain[ s] the shortcomings ... the burden
shifts to the applicant to rebut the prima facie case with evidence and/or
argument." Hyatt, 492 F.3d at1370. The Non-Final Office Action
adequately explains the§ 101 rejection. See Non-Final Act. 3-5. The
Examiner's statements satisfy§ 132(a) because they apply the Mayo/Alice
analytical framework and apprise Appellants of the reasons for the § 101
rejection under that framework. Appellants have not responded by alleging
a failure to understand the rejection. To the contrary, Appellants clearly
identify the abstract idea. See, e.g., App. Br. 3, 5.
Alice step 1: Abstract Idea
As to the first step of the Alice inquiry, Appellants contend
independent claims 1 and 10 are not directed to "a fundamental economic
practice," i.e., an abstract idea. App. Br. 7. Instead, Appellants argue the
claims address "the computer-centric challenge of providing live auctioneer
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functionality for a digital online auction between remotely located
participants and items, including a customizable virtual ringman comprising
a pop-up window or a float-over element that identifies one or more features
of interest associated with the vehicle up for virtual auction." Id. ( citing
DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014)).
Appellants further argue the claims address "a technical challenge of
providing live auctioneer functionality to ensure price realization of the item
being sold in a digital online auction of remotely located participants and
preventing sniping," which does not arise in the "brick and mortar" context,
but instead is rooted in computer technology. Id.
We are not persuaded by Appellants' arguments. As the Examiner
correctly recognized, Appellants' claims 1 and 10, when considered in light
of Appellants' Specification, (1) address "commercial problems that each
exist in in-person auctions, and not technical problems with the manner in
which any particular technology functions" (Ans. 6); (2) recite a process that
receives information about vehicles for sale, receives an indication of
interest in a vehicle, identifies an auction to sell the vehicle, placing the
vehicle in the auction, and conducting the auction with various features
(signal indicating live auctioneer actions, bidding process, virtual ringman
indicating features of interest, enabling sale of vehicle, etc.) (Non-Final Act.
3--4); and (3) do not amount to an improvement to another technology or
technical field, do not amount to an improvement to the functioning of a
computer itself, and do not move beyond a general link of the use of an
abstract idea to a particular technological environment (id. at 3). We agree
with the Examiner that the claims are directed to "conducting an auction,"
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which is a fundamental practice and an "abstract idea." See Bilski v.
Kappas, 130 S. Ct. 3218 (2010).
Contrary to Appellants' arguments, none of the steps recited in claims
1 and 10 seeks to improve computer functionality. "[P]roviding live
auctioneer functionality to ensure price realization of the item being sold in a
digital online auction of remotely located participants and preventing
sniping" is not the same as improving computer functionality. See App. Br.
7. In fact, none of the steps recited in claims 1 and 10 provides: ( 1) a
"solution ... necessarily rooted in computer technology in order to
overcome a problem specifically arising in the realm of computer networks,"
as explained by the Federal Circuit in DDR Holdings, 113 F.3d at 1257, (2)
"a specific improvement to the way computers operate," as explained in
Enfish, 822 F.3d at 1336, or (3) an "unconventional technological solution
... to a technological problem" that "improve[ s] the performance of the
system itself," as explained in Amdocs (Israel) Ltd. v. Openet Telecom, Inc.,
841 F.3d 1288, 1300 (Fed. Cir. 2016).
Alice step 2: Inventive Concept
As to the second step of the Alice inquiry, Appellants argue the recited
features of claims 1 and 10 amount to "significantly more" than a mere
abstract idea. App. Br. 10. According to Appellants, the claims:
Id.
provide an inventive concept of facilitating a live auction
between remote parties in an online auction by providing a real-
time audio signal of the live auctioneer, by providing a
customizable virtual ringman comprising a pop up window or a
float-over element that identifies one or more features of
interest associated with the vehicle up for virtual auction, and
by preventing sniping.
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Appellants' arguments are not persuasive. We find nothing in
Appellants' claims 1 and 10 that adds anything "significantly more" to
transform the abstract concept of conducting an auction. Alice, 134 S. Ct. at
2357. Appellants do not argue that any of the elements of claims 1 and 10
are individually inventive. See App. Br. 10. Nor do Appellants argue the
ordered combination of these elements is inventive. Id. Limiting an abstract
concept to generic components such as "a computer" and "a network" for
operation in the manner recited in claims 1 and 10 does not make the
abstract concept patent-eligible under 35 U.S.C. § 101. As recognized by
the Supreme Court, "the mere recitation of a generic computer cannot
transform a patent ineligible abstract idea into a patent-eligible invention."
See Alice, 134 S. Ct. at 2359 (concluding claims "simply instruct[ing] the
practitioner to implement the abstract idea of intermediated settlement on a
generic computer" not patent eligible); see also Ultramercial, 772 F .3d 709,
715-16 (Fed. Cir. 2014) (Claims merely reciting abstract idea of using
advertising as currency as applied to particular technological environment of
the Internet not patent eligible.); Accenture Global Servs., GmbH v.
Guidewire Software, Inc., 728 F.3d 1336, 1344--45 (Fed. Cir. 2013) (Claims
reciting "generalized software components arranged to implement an
abstract concept [of generating insurance-policy-related tasks based on rules
to be completed upon the occurrence of an event] on a computer" not patent
eligible.); Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1333-34 (Fed. Cir.
2012) ("Simply adding a 'computer aided' limitation to a claim covering an
abstract concept, without more, is insufficient to render [a] claim patent
eligible.").
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Appellants also contend "the fact that the Office Action indicates that
the claims are allowable over the prior art is proof that the claims amount to
significantly more than an abstract idea." App. Br. 10. However, it is not
enough for subject-matter eligibility that claimed techniques be novel and
nonobvious in light of prior art, passing muster under 35 U.S.C. §§ 102 and
103. See Mayo, 566 U.S. at 89-90; Synopsys, Inc. v. Mentor Graphics
Corp., 839 F.3d 1138, 1151 (Fed. Cir. 2016) ("[A] claim for a new abstract
idea is still an abstract idea. The search for a § 101 inventive concept is thus
distinct from demonstrating§ 102 novelty."); Intellectual Ventures I LLC v.
Symantec Corp., 838 F.3d 1307, 1315 (Fed. Cir. 2016) (same for
obviousness).
Finally, Appellants contend that, "to be an abstract idea, the idea must
be so broad as to 'preempt use of this approach in all fields.'" App. Br. 11
(citing Bilski, 561 U.S. at 611-12). This argument is not persuasive because,
although "preemption may signal patent ineligible subject matter, the
absence of complete preemption does not demonstrate patent eligibility."
Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir.
2015). "Where a patent's claims are deemed only to disclose patent
ineligible subject matter" under the Alice/Mayo framework, "preemption
concerns are fully addressed and made moot." Id.
Because Appellants' claims 1-10 are directed to a patent-ineligible
abstract concept and do not recite something "significantly more" under the
second prong of the Alice analysis, we sustain the Examiner's rejection of
these claims under 35 U.S.C. § 101.
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DECISION
We affirm the Examiner's decision rejecting claims 1-10.
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). See
37 C.F.R. § 41.50(±).
AFFIRMED
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