Ex Parte Kopelman et al

Patent Trial and Appeal Board

Oct 16, 2017

14015724 (P.T.A.B. Oct. 16, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/015,724 08/30/2013 Joshua Kopelman 2043.047U13 1058
49845 7590 10/18/2017
SCHWEGMAN LUNDBERG & WOESSNER/EBAY
P.O. BOX 2938
MINNEAPOLIS, MN 55402
EXAMINER
AIRAPETIAN, MILA
ART UNIT PAPER NUMBER
3625
NOTIFICATION DATE DELIVERY MODE
10/18/2017 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 JOSHUA KOPELMAN,
CHRISTOPHER D. FRALIC,
and SRINIVAS BALIJEPALLI
Appeal 2016-004363
Application 14/015,724
Technology Center 3600
Before ANTON W. FETTING, MICHAEL W. KIM, and AMEE A. SHAH,
Administrative Patent Judges.
FETTING, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE1
Joshua Kopelman, Christopher D. Fralic, and Srinivas Balijepalli
(Appellants) seek review under 35 U.S.C. § 134 of a final rejection of claims
1 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed October 6, 2015) and Reply Brief (“Reply Br.,” filed March 22,
2016), and the Examiner’s Answer (“Ans.,” mailed January 22, 2016), and
Final Action (“Final Act.,” mailed April 6, 2015).
Appeal 2016-004363
Application 14/015,724
20-39, the only claims pending in the application on appeal. We have
jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b).
The Appellants invented a way of using a mobile device to list goods
for sale in electronic commerce applications. Specification para. 2.
An understanding of the invention can be derived from a reading of
exemplary claim 27, which is reproduced below (bracketed matter and some
paragraphing added).
27. A computer-implemented method comprising:
storing product information received from a seller via a
network in a product database, the product information relating
to a good for sale;
presenting at least some of the product information in an
electronic storefront;
receiving credentials from a user to identify a user
account associated with the storefront, and allowing the user to
log in to the user account;
receiving, via a portable wireless communication device,
an inquiry from the logged-in user relating to an aspect of the
good for sale, the inquiry including data usable to identify the
good for sale;
and
based on an identification of the good, sending, via a
network, for display in an interface of the portable wireless
communication device, at least some of the information relating
to the good for sale.
Claims 20-39 stand rejected under 35 U.S.C. § 101 as directed to
non—statutory subject matter.
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Application 14/015,724
ISSUES
The issues of eligible subject matter turn primarily on whether the
claims recite more than conventional data processing in providing product
marketing information.
ANALYSIS
The Supreme Court
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. First,. . . determine whether the claims at issue are
directed to one of those patent—ineligible concepts. ... If so,
we then ask, “[w]hat else is there in the claims before us? . . .
To answer that question, . . . 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. [The
Court] described step two of this analysis as 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 Corp., Pty. Ltd. v CLS Bank Inti, 134 S.Ct. 2347, 2355 (2014) (citing
Mayo Collaborative Services v. Prometheus Laboratories, Inc., 132 S.Ct.
1289 (2012)).
To perform this test, we must first determine whether the claims at
issue are directed to a patent-ineligible concept. The Examiner finds the
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Application 14/015,724
claims are directed to presenting information over the internet. Non—Final
Action mailed August 20, 2014.-
While the Court in Alice made a direct finding as to what the claims
were directed to, we find that this case’s claims themselves and the
Specification provide enough information to inform one as to what they are
directed to.
The preamble to claim 27 does not recite what it is directed to, but the
steps in claim 27 result in receiving data that might be used for (but not
recited as actually performing) displaying information related to a good for
sale. The Specification at paragraph 2 recites that the invention relates to
listing goods for sale in electronic commerce applications. Thus, all this
evidence shows that claim 27 is directed to displaying information related to
goods for sale, i.e. product marketing. This is consistent with the
Examiner’s finding.
It follows from prior Supreme Court cases, and Bilski (Bilski v
Kappos, 561 U.S. 593 (2010)) in particular, that the claims at issue here are
directed to an abstract idea. Like the risk hedging in Bilski, we have no
trouble finding that the concept of product marketing is a fundamental
business practice long prevalent in our system of commerce. The use of
product marketing is also a building block of marketing practice. Thus,
product marketing, like hedging, is an “abstract idea” beyond the scope of
§101. See Alice Corp. Pty. Ltd. at 2356.
2 The Examiner does not repeat this in either the Final Action or Answer, but
only responds to the Appellants’ arguments.
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Furthermore, claims involving data collection, analysis, and display
are directed to an abstract idea. Elec. Power Grp. v. Alstom S.A., 830 F.3d
1350, 1353 (Fed. Cir. 2016) (holding that “collecting information, analyzing
it, and displaying certain results of the collection and analysis” are “a
familiar class of claims ‘directed to’ a patent ineligible concept”); see also In
re TLI Comma ’ns LLC Patent Litig., 823 F.3d 609, 611 (Fed. Cir. 2016);
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093—94 (Fed. Cir.
2016). Claim 27, unlike the claims found non-abstract in prior cases, uses
generic computer technology to perform data collection, analysis, and
display and does not recite an improvement to a particular computer
technology. See, e.g., McRO, Inc. v. Bandai Namco Games Am. Inc., 837
F.3d 1299, 1314—15 (Fed. Cir. 2016) (finding claims not abstract because
they “focused on a specific asserted improvement in computer animation”).
As such, claim 27 is directed to the abstract idea of receiving, storing, and
displaying data.
The remaining claims merely describe informational characteristics,
including some undefined characteristic for facilitating sale based on the
product marketing. We conclude that the claims at issue are directed to a
patent—ineligible concept.
The introduction of a computer into the claims does not alter the
analysis at Mayo step two.
the 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 if” is
not enough for patent eligibility. Nor is limiting the use of an
abstract idea “‘to a particular technological environment.’”
Stating an abstract idea while adding the words “apply it with a
computer” simply combines those two steps, with the same
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deficient result. Thus, if a patent’s recitation of a computer
amounts to a mere instruction to “implement[t]” an abstract
idea “on ... a computer,” that addition cannot impart patent
eligibility. This conclusion accords with the preemption
concern that undergirds our §101 jurisprudence. Given the
ubiquity of computers, wholly generic computer
implementation is not generally the sort of “additional
feature[e]” that provides any “practical assurance that the
process is more than a drafting effort designed to monopolize
the [abstract idea] itself.”
Alice Corp. Pty. Ltd., 134 S.Ct. at 2358 (citations omitted).
“[T]he relevant question is whether the claims here do more than
simply instruct the practitioner to implement the abstract idea ... on a
generic computer.” Alice Corp. Pty. Ltd., 134 S.Ct. at 2359. They do not.
Taking the claim elements separately, the function performed by the
computer at each step of the process is purely conventional. Using a
computer to store, receive, and display (which again is not actually recited in
claim 27) data amounts to electronic data query and retrieval—one of the
most basic functions of a computer. The limitation of “via a portable
wireless communication device,” although not strictly related to a generic
computer function, is still no more than abstract conceptual advice to use
generic communication by the ubiquitous wireless network. All of these
computer functions are well—understood, routine, conventional activities
previously known to the industry. In short, each step does no more than
require a generic computer to perform generic computer functions.
Considered as an ordered combination, the computer components of
Appellants’ method add nothing that is not already present when the steps
are considered separately. Viewed as a whole, Appellants’ method claims
simply recite the concept of product marketing as performed by a generic
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computer. The method claims do not, for example, purport to improve the
functioning of the computer itself. Nor do they effect an improvement in
any other technology or technical field. Instead, the claims at issue amount
to nothing significantly more than an instruction to apply the abstract idea of
product marketing using some unspecified, generic computer. Under our
precedents, that is not enough to transform an abstract idea into a patent-
eligible invention. See Alice Corp. Pty. Ltd. at 2360.
As to the structural claims, they
are no different from the method claims in substance. The
method claims recite the abstract idea implemented on a generic
computer; the system claims recite a handful of generic
computer components configured to implement the same idea.
This Court has long “wam[ed] . . . against” interpreting §
101“in ways that make patent eligibility ‘depend simply on the
draftsman’s art.’
Alice Corp. Pty. Ltd. at 2360.
We are not persuaded by Appellants’ argument that no evidence is
provided that the claims are directed to an abstract idea. App. Br. 9—11. As
we find supra, the record itself, especially the intrinsic record, provides
adequate evidence that the claims are directed to product marketing, which
itself is an abstract concept.
We are not persuaded by Appellants’ argument that the first part of
the Alice test has to take into account all limitations. Id. Appellants conflate
the two parts. The first part asks what the claims are directed to, rather than
how they get there. It is the second part that then considers the limitations
and the claims as a whole to see if there is more.
We are not persuaded by Appellants’ argument that because no court
decision has opined on this particular set of claims, they are not directed to
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abstract ideas. App. Br. 11—12. The Alice test is not constrained to only
those examples on which courts have opined.
We are not persuaded by Appellants’ argument that the claims are not
directed to a fundamental economic practice. App. Br. 13—14. Product
marketing is as old as travelling salesmen hawking their wares. The claims
do no more than use conventional technology to respond to the same queries
such salespeople responded to for ages. No particular implementation
showing a technological improvement is recited.
We are not persuaded by Appellants’ argument that the claims are not
directed to organizing human activity. App. Br. 14—18. First, this finding is
cumulative with the finding of being directed to fundamental economic
practice. Second, product marketing is one of the older human activities.
Third, both fundamental economic practices and organization of human
activities have been cited by our reviewing courts only as examples of
abstract conceptual advice. At bottom, these claims recite only abstract
conceptual advice to be performed on a computer and do not recite
implementations improving the underlying technology.
We are not persuaded by Appellants’ argument that the limitations are
inventive. App. Br. 18—19. Merely because a concept is novel does not
make that concept less more than an abstract concept. See Ultramercial, Inc.
v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014) (“the addition of merely
novel or non-routine components to the claimed idea [does not] necessarily
tum[ ] an abstraction into something concrete.”). Again, Appellants do not
recite any inventive implementation.
We are not persuaded by Appellants’ argument that the claims at issue
do not merely state an abstract idea and add the words “apply it.” App. Br.
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19— 20. Appellants only contend that the limitations include more than
presenting information. We agree, but the remaining limitations are also
conventional data processing steps, with no particular implementation
recited.
We are not persuaded by Appellants' argument that the claims at issue
solve a technological problem in conventional industry practice. App. Br.
20— 23. More specifically, Appellants argue that the asserted claims are
akin to the claims found patent—eligible in DDR Holdings, LLC v.
Hotels.com, L.P. 773 F.3d 1245 (Fed. Cir. 2014). In DDR Holdings, the
Court evaluated the eligibility of claims “address[ing] the problem of
retaining website visitors that, if adhering to the routine, conventional
functioning of Internet hyperlink protocol, would be instantly
transported away from a host’s website after ‘clicking’ on an
advertisement and activating a hyperlink.” Id. at 1257. There, the Court
found that the claims were patent eligible because they transformed the
manner in which a hyperlink typically functions to resolve a problem
that had no “pre—Internet analog.” Id. at 1258. The Court cautioned,
however, “that not all claims purporting to address Internet—centric
challenges are eligible for patent.” Id. For example, in DDR Holdings
the Court distinguished the patent—eligible claims at issue from claims
found patent—ineligible in Ultramercial. See id. at 1258—59 (citing
Ultramercial, 772 F.3d 7 09 at 715—16). As noted there, the
Ultramercial claims were “directed to a specific method of advertising and
content distribution that was previously unknown and never employed on
the Internet before.” Id. at 1258 (quoting Ultramercial, 772 F.3d at
715—16). Nevertheless, those claims were patent ineligible because they
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“merely recite[d] the abstract idea of ‘offering media content in exchange
for viewing an advertisement,’ along with ‘routine additional steps such as
updating an activity log, requiring a request from the consumer to view the
ad, restrictions on public access, and use of the Internet.’” Id.
Appellants’ asserted claims are analogous to claims found ineligible
in Ultramercial, and distinct from claims found eligible in DDR Holdings.
Appellants’ claims recite storing, receiving, and displaying data. This is
precisely the type of Internet activity found ineligible in Ultramercial.
We are not persuaded by Appellants’ argument that the claims do not
run afoul of preemption (App. Br. 23), because Appellants do not link the
assertion to the claims at hand. The similar argument on page 21 of the
Appeal Brief is unpersuasive as it is entirely conclusory. In any event, that
the claims do not preempt all forms of the abstraction or may be limited to
the abstract idea in some setting do not make them any less abstract. See
OIP Technologies, Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1360—1361
(2015).
CONCLUSIONS OF LAW
The rejection of claims 20-39 under 35 U.S.C. § 101 as directed to
non—statutory subject matter is proper.
DECISION
The rejection of claims 20—39 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). See 37 C.F.R.
§ 1.136(a)(l)(iv) (2011).
AFFIRMED
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