Ex Parte Kalin et al

Patent Trial and Appeal Board

Jul 30, 2018

12017501 (P.T.A.B. Jul. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/017,501 01/22/2008
37462 7590 08/01/2018
LANDO & ANASTASI, LLP
ONE MAIN STREET, SUITE 1100
CAMBRIDGE, MA 02142
FIRST NAMED INVENTOR
Robert Kalin
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.
E2017-700210 6509
EXAMINER
CIVAN,ETHAND
ART UNIT PAPER NUMBER
3684
NOTIFICATION DATE DELIVERY MODE
08/01/2018 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@LALaw.com
CKent@LALaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERT KALIN, CHRISTOPHER MAGUIRE,
HAIM SCHOPPIK, and JARED TARBELL
Appeal2017-004428
Application 12/017,501
Technology Center 3600
Before HUNG H. BUI, KARA L. SZPONDOWSKI, and
PHILLIP A. BENNETT, Administrative Patent Judges.
SZPONDOWSKI, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1-3, 5-8, 12, 17, 20-22, 24--31, 33-36, 40, 45-51,
53, 80-82, and 84--90, constituting all claims currently pending in the
application. 1 We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellants identify Etsy, Inc., as the real party in interest. App. Br. 3.
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Application 12/017,501
STATEMENT OF THE CASE
Appellants' invention is directed to a method and apparatus that
"allow[ s] shoppers to request custom made products from one or more
manufacturers .... includ[ing] placing a public request for bids to
manufacture a custom product and accepting offers from manufacturers to
fulfill the bids." Spec. 2.
Claim 1, reproduced below, is representative of the claimed subject
matter:
1. A communication method using a computer server, the
method comprising acts of:
displaying a request creation interface in a user interface
of a first computer system associated with a shopper, the
request creation interface including a plurality of fields in
which the shopper may enter information regarding a desired
custom product and a control which, when selected, causes an
indication of the information to be submitted to the computer
server as a request for a bid to create the custom product;
receiving, by the computer server, the request for the bid
to create the custom product from the first computer system;
sending, by the computer server, the request to at least
one second computer system associated with a seller;
displaying a request browsing interface in a user interface
of the at least one second computer system, the request
browsing interface including a representation of a plurality of
requests submitted by a plurality of shoppers, the request
browsing interface including a control which, when selected,
provides access to a specific request interface in the user
interface of the at least one second computer system displaying
the information entered by the shopper, the specific request
interface further including a control which, when selected,
permits the seller to access a bid submission interface in the
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user interface of the at least one second computer system, the
bid submission interface displaying fields through which the
seller may enter information regarding a bid to supply the
custom product and a control which, when selected, submits a
representation of the bid to supply the custom product to the
computer server;
receiving, by the computer server, at least one
representation of at least one bid to supply the custom product
from the at least one second computer system;
sending, by the computer server, the at least one
representation of the at least one bid to the first computer
system;
displaying a bid selection interface including a listing of
the at least one representation of the at least one bid in the user
interface of the first computer system and a control for selecting
a bid from the listing of the at least one representation of the at
least one bid which, when selected, sends an indication of
selection of the bid to the computer server;
receiving, by the computer server, the indication of the
selection by the shopper through the user interface of the bid
from the listing of the at least one representation of the at least
one bid;
displaying a bid status interface in the user interface of
the at least one second computer system, the bid status interface
including an indication of a status of the bid of the seller to
supply the custom product;
receiving, by the computer server from the at least one
second computer system, a progress update regarding
fabrication of the custom product during the fabrication of the
custom product; and
sending an indication of the progress update from the
computer server to the first computer system.
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REJECTION
Claims 1-3, 5-8, 12, 17, 20-22, 24--31, 33-36, 40, 45-51, 53, 80-82,
and 84--90 stand rejected under 35 U.S.C. § 101 as directed to patent
ineligible subject matter. Final Act. 3.
ANALYSIS
To determine whether a claim is eligible under § 101, "[ w ]e must first
determine whether the claims at issue are directed to a patent-ineligible
concept." Alice Corp. v. CLS Bank Int 'l, 134 S. Ct. 2347, 2355 (2014).
"[T]he claims are considered in their entirety to ascertain 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).
"If the claims are not directed to an abstract idea [or other patent-ineligible
concept], the inquiry ends. If the claims are 'directed to' an abstract idea,
then the inquiry proceeds to the second step of the Alice framework."
McRO, Inc. v. Bandai Namco Games America Inc., 837 F.3d 1299, 1312
(Fed. Cir. 2016).
The Examiner determines the claims are "directed to the series of
steps instructing how to fabricate and sell a custom product, which is a
fundamental economic practice." Final Act. 3; see also Ans. 6 ("The present
claims involve receiving various data such as bid data, processing it, and
selectively using it (the relevant data) to generate a progress update."). The
Examiner further determines the "method can be performed with or without
the assistance of a computer" and is "the mere automation of a mental
process." Final Act. 5, 7; see also Ans. 6.
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Appellants argue the claims "are not directed to or similar to any
concept found to be abstract by the courts." App. Br. 9; see also Reply Br.
6-10. Appellants further argue "[t]he alleged abstract idea identified by the
Examiner is divorced from the actual language of the claims and
overgeneralizes what is recited." App. Br. 12; see also Reply Br. 3---6. In
addition, Appellants argue "the recited method could not be performed
without a computer." Reply Br. 10.
We are not persuaded by Appellants' arguments and agree with the
Examiner's findings and conclusions. See Final Act. 3-7; see also Ans. 5-9.
The claims are directed to an abstract idea because they are focused on
collecting or receiving information ( e.g. relating to a custom product or bid),
sending information to another system, and displaying information ( e.g.
relating to requests, bids, or a progress update), which is not meaningfully
different than other claims found abstract by our reviewing court. See, e.g.,
Elec. Power Grp. v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016)
(claims directed to collection, manipulation, and display of data);
Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363,
1370 (Fed. Cir. 2015) (customizing information and presenting it to users
based on particular characteristics); Content Extraction and Transmission
LLC v. Wells Fargo Bank, National Ass 'n, 776 F.3d 1343, 1347 (Fed. Cir.
2014) ("collecting data, []recognizing certain data within the collected data
set, and ... storing that recognized data in a memory"); Cyberfone Systems,
LLC v. CNN Interactive Grp, Inc., 558 F. App'x 988, 992 (Fed. Cir. 2014)
(nonprecedential) ("using categories to organize, store, and transmit
information is well-established"); Dealertrack, Inc. v. Huber, 674 F.3d 1315,
1333 (Fed. Cir. 2012) (process including steps of receiving data from one
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source, selectively forwarding the data to another source, and forwarding
reply data to the first source explain the basic concept of "processing
information through a clearinghouse").
Moreover, we agree with the Examiner that the claims constitute "the
mere automation of a mental process." See 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.") Appellants' invention automates the manual
process of allowing shoppers to request bids for custom made products and
allowing suppliers to bid on and provide those custom made products. See,
e.g. Spec. 9: 14--30. The mere mention of certain claimed computer software
or hardware components ( e.g. "computer server," "interface," "database")
does not impose sufficiently meaningful limitations on claim scope beyond
these mental steps. CyberSource at 1372-73, 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.").
In the second step of the Alice framework, we then "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." Alice, 134 S. Ct. at 2355 (quoting
Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 78-79
(2012)). The Supreme Court describes this as "a search for an inventive
concept- i.e., an element or combination of elements that is sufficient to
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ensure that the patent in practice amounts to significantly more than a patent
upon the [ineligible concept] itself." Id. (quotation omitted).
The Examiner determines the claims include generic computer
elements, such as a computer server, computer system, and user interface
which do not amount to significantly more than the abstract idea. Final Act.
5---6. The Examiner determines "[ A Jppellant[ s] ha[ ve] not identified any
element that is not well understood, routine, and conventional[, n ]or does the
[S]pecification identify any element that is not well understood, routine, and
conventional." Ans. 7.
Appellants argue "[ t ]he Examiner has not provided any 'reasoned
explanation that supports' that the ordered combination of elements in the
claims of the present application constitute no more than a recitation of well-
understood, routine, and conventional activities." App. Br. 11; see also
Reply Br. 11. According to Appellants, "[ t ]he claims []recite more than
what is 'well-understood, routine, and conventional."' Reply Br. 12.
Appellants further argue "[ t ]he Examiner thus acknowledges that the ordered
combination of elements of the claims is non-obvious [so] [i]t is not logical
to assert that the claims are non-obvious yet recite no more than 'well-
understood, routine, and conventional activities."' App. Br. 12.
We are not persuaded by Appellants' arguments and agree with the
Examiner's findings and conclusions. See Final Act. 5-6; see also Ans. 7-8.
The inquiry is not whether conventional computers already apply the
abstract idea. Rather, we determine whether "each step does no rnore than
require a generic computer to perform generic computer functions." Alice,
134 S. Ct. at 2359 (emphasis added). Although the second step in the
Alice/Afayo framework is termed a search for an "inventive concept," the
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analysis is not an evaluation of novelty or non-obviousness, but rather, a
search for "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. A novel and
nonobvious claim directed to a purely abstract idea is, nonetheless, patent-
ineligible. See ]vfa_yo, 566 U.S. at 90; see Parker v. Flook, 437 U.S. 584,
588----595 (1978).
As discussed above, Appellants' claims are directed to collecting or
receiving information, sending information to another system, and
displaying information. Previous cases have similarly found that such
activities are conventional computer activities or routine data-gathering
steps. See, e.g. Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350
(Fed. Cir. 2016) ("Nothing in the claims, understood in light of the
specification, requires anything other than off-the-shelf, conventional
computer, network, and display technology for gathering, sending, and
presenting the desired information."); OIP Techs., Inc., v. Amazon.com, Inc.,
788 F.3d 1359, 1363, 115 USPQ2d 1090, 1093 (Fed. Cir. 2015) (claims
reciting, inter alia, sending messages over a network, gathering statistics,
using a computerized system to automatically determine an estimated
outcome, and presenting offers to potential customers found to merely recite
"well-understood, routine conventional activities" by either requiring
conventional computer activities or routine data-gathering steps); see also
buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014) ("That
a computer receives and sends the information over a network-with no
further specification-is not even arguably inventive.").
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The claims recite, inter alia, a "user interface," "computer server,"
"computer system," and "database," which are generically described in the
Specification. E.g., Spec. 10-15, Figs. 1, 2. Appellants have not adequately
explained how the claims are performed such that they are not routine,
conventional functions of a generic computer. The claims at issue do not
require any nonconventional computer or display components, or even a
"non-conventional and non-generic arrangement of known, conventional
pieces," but merely call for performance of the claimed information
receiving, sending, and displaying functions "on a set of generic computer
components." Bascom Global Internet Services, Inc. v. AT&T Mobility LLC,
827 F.3d 1341, 1349--52 (Fed. Cir. 2016). "[T]he mere recitation of a
generic computer cannot transform a patent-ineligible abstract idea into a
patent-eligible invention. Stating an abstract idea 'while adding the words
"apply it'" is not enough for patent eligibility." Alice, 134 S. Ct. at 2358
( citation omitted).
Appellants additionally argue the Examiner has failed to address the
dependent claims. App. Br. 13. According to Appellants, "[e]ach of the
dependent claims adds additional technical features and is entitled to review
as an ordered combination of elements." App. Br. 13.
While we agree with Appellants that the Examiner addressed the
dependent claims in an abbreviated manner ( e.g. Ans. 9), we agree with the
Examiner's conclusion that the dependent claims to not add significantly
more on their face. For example, the dependent claims recite limitations
generally reciting : (1) information included in the request to bid or the bid
itself (claims 2, 3, 8, 30, 31, 36, 80, 81); (2) generic computer components
( claims 5, 12, 17, 20, 33, 40, 45, 48, 53, 84, 85); (3) types of custom
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products (claims 6, 7, 34, 35); and (4) requests for, display of, or
transmission of additional information ( claims 21, 22, 24, 25, 26, 27, 28, 46,
47, 49, 50, 51, 82, 86, 88, 89, 90).
Accordingly, we sustain the Examiner's 35 U.S.C. § 101 rejection of
claims 1-3, 5-8, 12, 17, 20-22, 24--31, 33-36, 40, 45-51, 53, 80-82, and
84--90.
DECISION
For the above reasons, the Examiner's 35 U.S.C. § 101 rejection of
claims 1-3, 5-8, 12, 17, 20-22, 24--31, 33-36, 40, 45-51, 53, 80-82, and
84--90 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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