Ex Parte LeCompte et al

Patent Trial and Appeal Board

Jun 27, 2018

13531669 (P.T.A.B. Jun. 27, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/531,669 06/25/2012
27572 7590 06/29/2018
HARNESS, DICKEY & PIERCE, P.L.C.
P.O. BOX 828
BLOOMFIELD HILLS, MI 48303
UNITED ST A TES OF AMERICA
FIRST NAMED INVENTOR
David Lecompte
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.
16307-000001/US 3631
EXAMINER
VETTER, DANIEL
ART UNIT PAPER NUMBER
3628
NOTIFICATION DATE DELIVERY MODE
06/29/2018 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):
troymailroom@hdp.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID LECOMPTE, CHRISTINE DOHMEN, and
KRISTI LAMONT
Appeal2017-002515
Application 13/531,669
Technology Center 3600
Before THU A. DANG, LINZY T. McCARTNEY, and
SCOTT B. HOWARD, Administrative Patent Judges.
McCARTNEY, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1-
18, 20, and 21. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appeal2017-002515
Application 13/531,669
CLAIMED INVENTION
Claim 1 illustrates the claimed invention:
1. A computer-implemented method for booking a travel
reservation in accordance with an organizational travel policy,
compnsmg:
searching, by a travel website, for available travel services
for a given person associated with an organization of persons;
receiving, by the travel website, selection of a particular
itinerary offered by a travel service provider from the given
person;
sending, by the travel website, an electronic message over
a network to a server computer located remotely from the travel
website, where the electronic message includes a reservation
request for the particular itinerary selected by the given person
and a unique identifier for the particular itinerary provided by the
travel service provider;
receiving, at the server computer, the electronic message
sent by the travel website;
confirming, by the server computer, availability of the
requested reservation by interfacing with a reservation system of
the travel service provider or an industry wide computer
reservation system;
evaluating, by the server computer, the requested
reservation in relation to a travel policy of the organization,
where the travel policy specifies rules for travel reservations
made by persons of the organization; and
sending, by the server computer, a confirmation message
over the network to the given person, the confirmation message
providing an indication of the availability of the reservation,
where the steps of confirming, evaluating and sending a
confirmation message are performed in response to receiving the
electronic message at the server computer.
App. Br. 18-19.
2
Appeal2017-002515
Application 13/531,669
1-18,20,21
REJECTIONS
§ 101
ANALYSIS
Section 101 of the Patent Act provides that "[ w ]hoever invents or
discovers any new and useful process, machine, manufacture, or
composition of matter, or any new and useful improvement thereof, may
obtain a patent therefor, subject to the conditions and requirements of this
title." 35 U.S.C. § 101. However, "this provision contains an important
implicit exception: Laws of nature, natural phenomena, and abstract ideas
are not patentable." Alice Corp. Pty. v. CLS Banklnt'l, 134 S. Ct. 2347,
2354 (2014). The Supreme Court has set forth the following two-step test
for determining whether a patent claim falls within one of these exceptions:
First, we 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, we 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. We have 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, 134 S. Ct. at 2355 (citations omitted) (quoting Mayo Collaborative
Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 77-79 (2012)).
Applying this two-step test, the Examiner concluded the appealed
claims encompass a patent-ineligible abstract idea. Final Act. 2--4. The
Examiner explained that "[ t ]he claims are directed to the abstract idea of
3
Appeal2017-002515
Application 13/531,669
making travel arrangements for a person ... which is an idea of itself and [a]
method of organizing human activities." Final Act. 3. The Examiner
determined "[t]he claims do not include additional elements that are
sufficient to amount to significantly more than the judicial exception
because there are no meaningful limitations that transform [this] exception
into a patent eligible application." Final Act. 3.
With respect to claim 1, Appellants argue the claim is not directed to
an abstract idea as determined by the Examiner. In Appellants' view, the
claims are not directed to "an idea of itself' because the claims "recite
specific automated interactions between two different computer
technologies: travel websites ... and corporate travel management tools."
Reply Br. 2. Appellants argue claim 1 "can only be viewed as 'organizing
human activities' when abstracted at a high level and without consideration
of the claim language." Reply Br. 2; see also App. Br. 12.
We find Appellants' arguments unpersuasive. To determine whether
claims are directed to an abstract idea, "we must 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 Tex., LLC v.
DIRECTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016). This often involves
"ask[ ing] whether the claims are directed to an improvement to computer
functionality versus being directed to an abstract idea." In re TL! Commc 'ns
LLC Patent Litig., 823 F.3d 607, 612 (Fed. Cir. 2016).
By its own terms, claim 1 is directed to "a method for booking a travel
reservation in accordance with an organizational travel policy" that, among
other things, uses a travel website to search for available travel services and
a server computer to evaluate a requested reservation against an
4
Appeal2017-002515
Application 13/531,669
organizational travel policy. App. Br. 18-19. This is consistent with
Appellants' written description, which describes the disclosed invention as
"an improved method for booking travel reservations in accordance with
organizational travel policies while leveraging search capabilities of travel
websites." Spec. ,r 1; see also Spec. ,r 18 ("[A]n improved method is
provided for booking a travel reservation that leverages the search
capabilities of travel websites while adhering to travel policies administered
by a travel management service.").
Although the claimed method recites various components ( e.g., "a
travel website," "a server computer," "a network," and reservation systems),
Appellants' written description indicates these components encompass
known technology. For example, Appellants' written description discloses
"travelers will often search for available travel services utilizing well known
travel websites 16, such as Expedia, Orbitz, Kayak etc." and "[ m Jost travel
websites enable the traveler to share a particular itinerary for the travel
service being searched." Spec. ,r,r 17, 18; see also Spec. ,r 3 (discussing
travel websites such as Expedia and Kayak). Appellants' written description
explains that the disclosed method leverages these known travel websites.
See Spec. 18 ( "[ A ]n improved method is provided for booking a travel
reservation that leverages the search capabilities of travel websites .... ");
Spec., Title ("TECHNIQUES FOR BOOKING TRAVEL RESERVATIONS
WHILE LEVERAGING TRAVEL WEBSITES"); see also Reply Br. 3
(stating that "the traveler can begin by searching for available travel services
using well known travel websites, i.e., 'searching by a travel website, for
available travel services for a given person associated with an organization
of persons' as recited in claim 1 ").
5
Appeal2017-002515
Application 13/531,669
In addition, the Background section of Appellants' written description
discloses that travel management companies provided "self-booking tools"
that, like the server computer recited in claim 1, evaluate reservation
requests against organizational travel policies. See Spec. ,r 2 ("Reservation[]
requests are in tum evaluated by the self-booking tools against corporate
travel policies .... "); see also Spec. ,r 15 (explaining that the disclosed
travel management service 12 is "referred to as a booking tool"). Appellants
written description also teaches that (1) the disclosed "apparatus ... may
comprise a general-purpose computer," (2) "[t]he algorithms and operations
presented herein are not inherently related to any particular computer or
other apparatus. Various general-purpose computer systems may also be
used with programs in accordance with the teachings herein," (3) "[t]he
required structure for a variety of these systems will be apparent to those of
skill in the art," and (4) "[t]he present disclosure is well suited to a wide
variety of computer network systems." Spec. ,r,r 43, 44, 45. Therefore, even
if the claimed components were not known in the art, Appellants' written
description makes clear the components can be implemented using generic
technology. In light of these disclosures, it is apparent that the claimed
invention does not improve computer functionality but instead leverages
existing computer functionalities to execute an abstract idea.
Moreover, we frequently look to prior decisions to determine whether
a claim is directed to an abstract idea. See Amdocs (Israel) Ltd. v. Openet
Telecom, Inc., 841 F.3d 1288, 1294 (Fed. Cir. 2016) ("Instead of a
definition, then, the decisional mechanism courts now apply 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."). Here,
6
Appeal2017-002515
Application 13/531,669
claim 1 recites a method in which certain components search, send, receive,
and analyze specified content. See Spec. 18-19. The Federal Circuit has
concluded claims reciting similar steps are directed to abstract ideas. See,
e.g., Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir.
2016) ("The advance [the claims] purport to make is a process of gathering
and analyzing information of a specified content, then displaying the results,
and not any particular assertedly inventive technology for performing those
functions. They are therefore directed to an abstract idea."). Accordingly,
we agree with the Examiner that claim 1 is directed to an abstract idea.
Appellants next contend that claim 1 recites meaningful limitations
that amount to significantly more than an abstract idea. See App. Br. 13-15;
Reply Br. 2-3. Appellants contend the "searching" and "sending" steps
performed by the travel website and the "evaluating" step performed by the
server computer are not conventional activities known in the travel industry.
App. Br. 13. In Appellants' view, the Examiner oversimplified claim 1 and
failed to consider the claim as a combination. App. Br. 13-14. Appellants
also contend claim 1 is analogous to the claims the Federal Circuit
concluded were directed to patentable subject matter in DDR Holdings, LLC
v. Hotels.com L.P., 773 F.3d 1245 (Fed. Cir. 2014).
We find Appellants' arguments unpersuasive. As discussed above,
Appellants' written description makes clear it was known that travelers used
travel websites to search for travel services and share itineraries and that
self-booking tools evaluated reservation requests against organizational
travel policies. See Spec. ,r,r 2, 3, 17, 18. Appellants' written description
also makes clear that the claimed invention encompasses generic computer
technology. See Spec. ,r,r 2-3, 17-18, 43--45. As characterized by
7
Appeal2017-002515
Application 13/531,669
Appellants, the claimed invention links a travel website's search function
with a booking tool's evaluation function by sending an e-mail containing
itinerary information from the travel website to the booking tool. See, e.g.,
Reply Br. 3. Linking travel websites and self-booking tools by e-mailing
itinerary information does not amount to significantly more than an abstract
idea. Cf Alice, 134 S. Ct. at 2360 ("Nearly every computer will include a
'communications controller' and 'data storage unit' capable of performing
the basic calculation, storage, and transmission functions required by the
method claims."); 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.").
As for Appellants' argument that the Examiner did not consider claim
1 as a combination, the Examiner explicitly considered the claim as an
ordered combination and determined the combination did not provide an
inventive concept. See, e.g., Ans. 3 ("With respect to evaluating the claims
as an ordered combination, looking at the limitation as an ordered
combination adds nothing .... There is no indication that the combination
of elements improves the functioning of a computer or improves any other
technology.").
With respect to DDR Holdings, we disagree with Appellants that
claim 1 is similar to the claims considered in DDR Holdings. In DDR
Holdings, the Federal Circuit concluded the claims before it were patent
eligible in part because the claims specified "how interactions with the
Internet are manipulated to yield a desired result-a result that overrides the
routine and conventional sequence of events ordinarily triggered by the click
of a hyperlink." DDR Holdings, 773 F.3d at 1258 (emphasis added). By
8
Appeal2017-002515
Application 13/531,669
comparison, Appellants' written description makes clear that method recited
in claim 1 may be performed using generic technology operating in the
expected fashion. See Spec. ,r,r 2-3, 17-18, 43--45; see also DDR Holdings,
773 F.3d at 1256 ("[A]fter Alice, there can remain no doubt: recitation of
generic computer limitations does not make an otherwise ineligible claim
patent-eligible."). Moreover, claim 1 simply recites a series of steps
specified at a high level of generality that include little to no technical detail.
See App. Br. 18-19. This also distinguishes claim 1 from the claims
discussed in DDR Holdings. See Secured Mail Sols. LLC v. Universal
Wilde, Inc., 873 F.3d 905, 912 (Fed. Cir. 2017) (distinguishing DDR
Holdings in part because the claims at issue "are non-specific and lack
technical detail").
Finally, Appellants separately contend that claim 21 is directed to
patentable subject matter. See App. Br. 16-17. Appellants assert "claim 21
recites that alternative available itineraries are retrieved and provided ( along
with a hyperlink)" and argue Examiner ignored these "meaningful
limitations." App. Br. 16. Appellants also contend claim 21 is similar to the
claims found patent eligible in DDR Holdings. See App. Br. 16-17.
We find Appellants' arguments unpersuasive. Claim 21 indirectly
depends from claim 1 and recites "wherein the confirmation message
encapsulates a hyperlink for the available itinerary and the hyperlink
navigates to a web page that enables booking of a reservation for the
available itinerary with the travel service provider." App. Br. 26. Far from
ignoring the limitations recited in this claim, the Examiner found "[ t ]here is
nothing technologically distinctive about the messages being sent, they are
simply messages being sent over a network ... that include hyperlinks
9
Appeal2017-002515
Application 13/531,669
( which have the routine and conventional use of linking to a webpage ). "
Final Act. 2; see also id. ( discussing Internet Patents Corp. v. Active
Network, Inc., 790 F.3d 1343, 1344 (Fed. Cir. 2015)). Appellants have not
persuasively challenged this finding. The Examiner determined claim 21 is
directed to an abstract idea and that none of the elements recited in the claim
"offer[] a meaningful limitation beyond generally linking 'the use of the
[method]' to a particular technological environment."' Ans. 4 ( quoting
Alice, 134 S. Ct. at 2360). Appellants' conclusory assertions have not
persuaded us the Examiner erred. As to Appellants' argument that claim 21
is similar to the claims at issue in DDR Holdings, we find this argument
unpersuasive for the same reasons we found this argument unpersuasive
with respect to claim 1.
For the above reasons, we sustain the Examiner's rejections of claim 1
and 21. Because Appellants have not presented separate, persuasive
patentability arguments for claims 2-18 and 20, we also sustain the
Examiner's rejections of these claims.
10
Appeal2017-002515
Application 13/531,669
1-18,20,21
Summar
CONCLUSION
§ 101 1-18,20,21
1-18,20,21
No 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).
AFFIRMED
11