Timothy Noel. Hentschel et al.Download PDFPatent Trials and Appeals BoardDec 5, 201910707733 - (D) (P.T.A.B. Dec. 5, 2019) Copy Citation 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. 10/707,733 01/08/2004 Timothy Noel Hentschel LEXYL.001RC3 1732 27299 7590 12/05/2019 GAZDZINSKI & ASSOCIATES, PC 16644 WEST BERNARDO DRIVE SUITE 201 SAN DIEGO, CA 92127 EXAMINER JOSEPH, TONYA S ART UNIT PAPER NUMBER 3628 MAIL DATE DELIVERY MODE 12/05/2019 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte TIMOTHY NOEL HENTSCHEL and JOHN ALAN PRINCE ____________ Appeal 2018-005690 Application 10/707,733 Technology Center 3600 ____________ Before MURRIEL E. CRAWFORD, JOSEPH A. FISCHETTI, and NINA L. MEDLOCK, Administrative Patent Judges. MEDLOCK, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 88–110. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Our decision references Appellant’s Appeal Brief (“Appeal Br.,” filed October 31, 2017) and Reply Brief (“Reply Br.,” filed May 14, 2018), and the Examiner’s Answer (“Ans.,” mailed March 13, 2018) and Non-Final Office Action (“Non-Final Act.,” mailed May 31, 2017). Appellant identifies the real party in interest as Lexyl Travel Technologies, Inc. Appeal Br. 1. Appeal 2018-005690 Application 10/707,733 2 CLAIMED INVENTION Appellant’s claimed invention “relates generally to electronic commerce” and, more predominantly, to “searching and confirming a block of hotel rooms for a group through the Internet” (Spec. ¶ 19). Claims 88, 103, and 106 are the independent claims on appeal. Claim 106, reproduced below with bracketed notations added, is illustrative of the claimed subject matter: 106. A method for facilitating a hotel reservation, comprising: [(a)] populating a computer database with a plurality of participating bidders; [(b)] configuring a plurality of reverse auction parameters on one or more computer servers; [(c)] searching online wholesaler inventory; [(d)] transmitting a plurality of bid notification electronic messages, the bid notification electronic messages configured to direct a recipient of a bid notification electronic message of the plurality of bid notification electronic messages to an online travel coordinator group information page; [(e)] providing an online form to receive postings from a plurality of potential buyers via a network connection; [(f)] performing a reverse auction on the one or more computer servers in accordance with at least one of the plurality of reverse auction parameters to order a plurality of bids from the plurality of participating bidders; [(g)] receiving the plurality of bids from respective recipients of the bid notification electronic messages[,] wherein the received bids comprises at least one bid that is at a higher rate than a previously submitted bid; [(h)] arranging the plurality of bids into a plurality of distinct groupings on the online travel coordinator group information page, the plurality of distinct groupings comprising automated bids and non-automated bids; Appeal 2018-005690 Application 10/707,733 3 [(i)] transmitting an offer via the network connection to at least one of the plurality of potential buyers, wherein the offer comprises an accepted bid, wherein the accepted bid may comprise the at least one bid that is at the higher rate than the previously submitted bid[,] wherein the reverse auction allows at least one of the plurality of participating bidders to submit more than one bid in response to a posting; [(j)] providing contact information via the network connection for a bidding party of the accepted bid to the at least one of the plurality of potential buyers to enable direct communication with the bidding party of the accepted bid to complete the transaction; and [(k)] providing an administrative monitoring application that communicates with the computer database in order to access information associated with the plurality of participating bidders as well as monitor the status of commissions associated with a completed hotel reservation[,] wherein the act of arranging the plurality of bids into a plurality of distinct groupings on the online travel coordinator group information page further comprises separating the automated bids from the non-automated bids by a border and labeling the automated bids[,] and wherein the performance of the reverse auction, receipt of the plurality of bids including receipt of the at least one bid that is at a higher rate than the previously submitted bid and the provision of the contact information via the network connection for the bidding party of the accepted bid to the at least one of the plurality of potential buyers facilitates a booking of the hotel reservation. REJECTIONS Claims 88–110 are rejected under 35 U.S.C. § 101 as directed to a judicial exception without significantly more. Claims 88–110 are rejected under 35 U.S.C. § 112, second paragraph, as indefinite for failing to particularly point out and distinctly claim the subject matter that Appellant regards as the invention. Appeal 2018-005690 Application 10/707,733 4 Claims 88, 89, 103, and 106 are rejected under 35 U.S.C. § 103(a) as unpatentable over Moshal et al. (US 2001/0042041 A1, published Nov. 15, 2001) (“Moshal”), Hole (US 2004/0225551 A1, published Nov. 11, 2004), Ghouri et al. (US 2002/0082978 A1, published June 27, 2002) (“Ghouri”), Norrid (US 2003/0061145 A1, published Mar. 27, 2003), and Pathak (US 2002/0016760 A1, published Feb. 7, 2002).2 ANALYSIS Patent-Ineligible Subject Matter Appellant argues the pending claims as a group (Appeal Br. 4–9). We select independent claim 106 as representative. The remaining claims stand or fall with claim 106. See 37 C.F.R. § 41.37(c)(1)(iv). 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. Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014). The Supreme Court, in Alice, reiterated the two-step framework previously set forth in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66 (2012), “for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim 2 We treat, as inadvertent, the Examiner’s omission of claims 89 and 106 in identifying the claims rejected under 35 U.S.C. § 103(a) (see Non-Final Act. 5), in view of the Examiner’s discussion of claim 89 (id. at 7) and further identification of claims 90–102, 104, 105, and 107–110 as claims that “are not rejected with prior art.” Id. at 8. Appeal 2018-005690 Application 10/707,733 5 patent-eligible applications of those concepts.” Alice Corp., 573 U.S. at 217. The first step in that analysis is to “determine whether the claims at issue are directed to one of those patent-ineligible concepts.” Id. If the claims are not directed to a patent-ineligible concept, e.g., an abstract idea, the inquiry ends. Otherwise, the inquiry proceeds to the second step where the elements of the claims are considered “individually and ‘as an ordered combination’” to determine whether there are additional elements that “‘transform the nature of the claim’ into a patent-eligible application.” Id. (quoting Mayo, 566 U.S. at 79, 78). This is “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.’” Id. at 217–18 (alteration in original). In rejecting the pending claims under 35 U.S.C. § 101, the Examiner determined that the claims are directed to “performing a reverse bidding auction,” which the Examiner concluded is, inter alia, a method of organizing human activity and an abstract idea similar to other concepts that the courts have held abstract (Non-Final Act. 2–3). The Examiner also determined that the claims do not include additional elements that are sufficient to amount to significantly more than the abstract idea itself (id. at 3–4). After Appellant’s briefs were filed, and the Examiner’s Answer mailed, the U.S. Patent and Trademark Office (the “USPTO”) published revised guidance for use by USPTO personnel in evaluating subject matter eligibility under 35 U.S.C. § 101. 2019 REVISED PATENT SUBJECT MATTER ELIGIBILITY GUIDANCE, 84 Fed. Reg. 50, 57 (Jan. 7, 2019) (the “2019 Revised Guidance”). That guidance revised the USPTO’s examination Appeal 2018-005690 Application 10/707,733 6 procedure with respect to the first step of the Mayo/Alice framework by (1) “[p]roviding groupings of subject matter that [are] considered an abstract idea”; and (2) clarifying that a claim is not “directed to” a judicial exception if the judicial exception is integrated into a practical application of that exception. Id. at 50. The 2019 Revised Guidance, by its terms, applies to all applications, and to all patents resulting from applications, filed before, on, or after January 7, 2019. Id.3 Step One of the Mayo/Alice Framework (2019 Revised Guidance, Step 2A) The first step in the Mayo/Alice framework, as mentioned above, is to determine whether the claims at issue are “directed to” a patent-ineligible concept, e.g., an abstract idea. Alice Corp., 573 U.S. at 217. This first step, as set forth in the 2019 Revised Guidance (i.e., Step 2A), is a two-prong test; in Step 2A, Prong One, we look to whether the claim recites a judicial exception, e.g., one of the following three groupings of abstract ideas: (1) mathematical concepts; (2) certain methods of organizing human activity, e.g., fundamental economic principles or practices, commercial or legal interactions; and (3) mental processes. 2019 Revised Guidance, 84 Fed. Reg. at 54. If so, we next consider whether the claim includes additional elements, beyond the judicial exception, that “integrate the 3 The 2019 Revised Guidance supersedes MANUAL OF PATENT EXAMINING PROCEDURE (“MPEP”) § 2106.04(II) and also supersedes all versions of the USPTO’s “Eligibility Quick Reference Sheet Identifying Abstract Ideas.” See 2019 Revised Guidance, 84 Fed. Reg. at 51 (“Eligibility-related guidance issued prior to the Ninth Edition, R-08.2017, of the MPEP (published Jan. 2018) should not be relied upon.”). Accordingly, Appellant’s arguments challenging the sufficiency of the Examiner’s rejection will not be addressed to the extent those arguments are based on now superseded USPTO guidance. Appeal 2018-005690 Application 10/707,733 7 [judicial] exception into a practical application,” i.e., that apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception (“Step 2A, Prong Two”). Id. at 54–55. Only if the claim (1) recites a judicial exception and (2) does not integrate that exception into a practical application do we conclude that the claim is “directed to” the judicial exception, e.g., an abstract idea. Id. We are not persuaded by Appellant’s arguments that the Examiner overgeneralized the concept to which claim 106 is directed (Reply Br. 1–5)4 or that the Examiner otherwise erred in determining that claim 106 is directed to an abstract idea (Appeal Br. 5–9). The Federal Circuit has explained that “the ‘directed to’ inquiry applies a stage-one filter to claims, considered in light of the specification, based on whether ‘their character as a whole is directed to excluded subject matter.’” Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016) (quoting Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015)). It asks 4 The Examiner’s characterization of claim 106 is, in our view, fully consistent with the Specification, including the claim language. That the claim includes more words than the phrase the Examiner used to articulate the abstract idea, and that the Examiner, thus, articulates the abstract idea at a higher level of abstraction than would Appellant is an insufficient basis to persuasively argue that the claim language has been mischaracterized. See Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240–41 (Fed. Cir. 2016) (“An abstract idea can generally be described at different levels of abstraction. As the Board has done, the claimed abstract idea could be described as generating menus on a computer, or generating a second menu from a first menu and sending the second menu to another location. It could be described in other ways, including, as indicated in the specification, taking orders from restaurant customers on a computer.”). Appeal 2018-005690 Application 10/707,733 8 whether the focus of the claims is on a specific improvement in relevant technology or on a process that itself qualifies as an “abstract idea” for which computers are invoked merely as a tool. See id. at 1335–36. Here, it is clear from the Specification, including the claim language, that the claims focus on an abstract idea, and not on any improvement to technology and/or a technical field. The Specification is entitled “System for Online Group Reservations,” and describes that the present invention provides a software interface and method whereby a group travel coordinator may communicate with hotel and travel vendors via the Internet, and access and accept bids placed from multiple online hotel booking engines in real-time (Spec. ¶ 3). The Specification describes that in traditional manual systems, rates are gathered over the phone by calling several hotels, or by calling a third party, e.g., a travel agent, who then calls the hotels or a wholesaler (id. ¶ 2). The claimed invention ostensibly improves upon these traditional systems by alerting hotels to a group reservation request posting and automatically searching online wholesaler inventory — acts that, according to the Specification, reduce a process that before could take days to a fraction of the required time (id.). Consistent with this disclosure, claim 106 recites performing a reverse auction for a block of hotel rooms by: (1) transmitting, to a plurality of registered hotels and travel vendors, bid notification messages directing the hotels and travel vendors to a travel coordinator group information webpage containing information regarding the type of accommodations being sought by the travel coordinator, and inviting the hotels and travel vendors to submit bids as part of a reverse auction, i.e., Appeal 2018-005690 Application 10/707,733 9 populating a computer database with a plurality of participating bidders; configuring a plurality of reverse auction parameters on one or more computer servers; searching online wholesaler inventory; transmitting a plurality of bid notification electronic messages, the bid notification electronic messages configured to direct a recipient of a bid notification electronic message of the plurality of bid notification electronic messages to an online travel coordinator group information page; providing an online form to receive postings from a plurality of potential buyers via a network connection; [and] performing a reverse auction on the one or more computer servers in accordance with at least one of the plurality of reverse auction parameters to order a plurality of bids from the plurality of participating bidders (steps (a)–(f)); (2) receiving bids from the message recipients and posting the bids on the travel coordinator group information page for viewing by the travel coordinator, i.e., receiving the plurality of bids from respective recipients of the bid notification electronic messages[,] wherein the received bids comprises at least one bid that is at a higher rate than a previously submitted bid; [and] arranging the plurality of bids into a plurality of distinct groupings on the online travel coordinator group information page, the plurality of distinct groupings comprising automated bids and non-automated bids (steps (g) and (h)); (3) transmitting an acceptance to at least one of the participating bidders, i.e., transmitting an offer via the network connection to at least one of the plurality of potential buyers, wherein the offer comprises an accepted bid, wherein the accepted bid may comprise the at least one bid that is at the higher rate than the previously submitted bid[,] wherein the reverse auction allows at least one of the plurality of participating bidders to submit more than one bid in response to a posting Appeal 2018-005690 Application 10/707,733 10 (step (i)); and (4) providing contact information for the travel coordinator to the party submitting the accepted bid so that the bidding party can communicate directly with the travel coordinator in booking the block of hotel rooms, i.e., [(j)] providing contact information via the network connection for a bidding party of the accepted bid to the at least one of the plurality of potential buyers to enable direct communication with the bidding party of the accepted bid to complete the transaction; and [(k)] providing an administrative monitoring application that communicates with the computer database in order to access information associated with the plurality of participating bidders as well as monitor the status of commissions associated with a completed hotel reservation[,] wherein the act of arranging the plurality of bids into a plurality of distinct groupings on the online travel coordinator group information page further comprises separating the automated bids from the non-automated bids by a border and labeling the automated bids[,] and wherein the performance of the reverse auction, receipt of the plurality of bids including receipt of the at least one bid that is at a higher rate than the previously submitted bid and the provision of the contact information via the network connection for the bidding party of the accepted bid to the at least one of the plurality of potential buyers facilitates a booking of the hotel reservation (steps (j) and (k)). These limitations, when given their broadest reasonable interpretation, recite conducting a reverse auction for a block of hotel rooms, i.e., a fundamental economic practice, which is a method of organizing human activity and, therefore, an abstract idea. See 2019 Revised Guidance, 84 Fed. Reg. at 52. See also Priceplay.com, Inc. v. AOL Advert., Inc., 83 F. Supp. 3d 577, 583 (D. Del. 2015) (“Auctions, competitive activities, and sales transactions are all abstract ideas, and do not become non-abstract when combined and conducted over the Internet.”), aff’d mem., 627 F. App’x 925 (Fed. Cir. 2016); Advanced Auctions LLC v. eBay Inc., Appeal 2018-005690 Application 10/707,733 11 No. 13CV1612 BEN (JLB), 2015 WL 1415265, at *4 (S.D. Cal. Mar. 27, 2015) (“Like hedging financial risk, intermediated settlement, or using advertising as currency, an auction is a ‘fundamental economic practice long prevalent in our system of commerce.’ Alice Corp., [573 U.S. at 219].”). Having concluded that claim 106 recites a judicial exception, i.e., an abstract idea (Step 2A, Prong One), we next consider whether the claim recites additional elements that integrate the judicial exception into a practical application (Step 2A, Prong Two). The only additional elements recited in claim 106, beyond the abstract idea, are the “computer database,” “one or more computer servers,” “server administrative monitoring application,” and “network” — elements that the Examiner observes amount to no more than generic computer components (Non-Final Act. 3). We find no indication in the Specification, nor does Appellant direct us to any indication, that the operations recited in claim 106 require any specialized computer hardware or other inventive computer components, i.e., a particular machine, invoke any assertedly inventive programming, or that the claimed invention is implemented using other than generic computer components to perform generic computer functions. See DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014) (“[A]fter Alice, there can remain no doubt: recitation of generic computer limitations does not make an otherwise ineligible claim patent- eligible.”). We also find no indication in the Specification that the claimed invention effects a transformation or reduction of a particular article to a different state or thing. Nor do we find anything of record, short of attorney argument, that attributes an improvement in technology and/or a technical Appeal 2018-005690 Application 10/707,733 12 field to the claimed invention or that otherwise indicates that the claimed invention integrates the abstract idea into a “practical application,” as that phrase is used in the 2019 Revised Guidance.5 Appellant argues that the pending claims do not recite an abstract idea for which computers are invoked merely as a tool, and that claim 106, for example, is directed to an improvement in the operation of computer servers and resolves particular Internet-centric problems (Appeal Br. 5–6). Appellant, thus, maintains that the present claims are “similar in important respects to the allowable claims at issue in DDR Holdings” and, like the claims in DDR Holdings, do not merely recite the performance of some business practice known from the pre-Internet world along with the requirement to perform it on the Internet (id. at 8; see also Reply Br. 5). Instead, according to Appellant, the claimed solution is necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks (Appeal Br. 8). Citing paragraphs 1 and 2 of the Specification, Appellant asserts that the present invention processes transactions in “a fraction of the original time” and overcomes “Internet-based problems regarding, inter alia, contracts with ‘too many restrictions to book groups into’ as compared with prior art manual as well as automated processes” (id. at 6; see also Reply 5 The 2019 Revised Guidance references MPEP § 2106.05(a)–(c) and (e) in describing the considerations that are indicative that an additional element or combination of elements integrates the judicial exception, e.g., the abstract idea, into a practical application. 2019 Revised Guidance, 84 Fed. Reg. at 55. If the recited judicial exception is integrated into a practical application, as determined under one or more of these MPEP sections, the claim is not “directed to” the judicial exception. Appeal 2018-005690 Application 10/707,733 13 Br. 5). Appellant maintains that the present invention also remedies various other deficiencies of these prior processes (e.g., by alerting hotels of group reservation postings and automatically searching online wholesaler inventory; allowing hotels and travel vendors to sell rooms at any rate and submit multiple bids on the same group reservation request; allowing an accepted bid to be at a higher rate than a previously submitted bid; and allowing group travel coordinators to search for information without obligation) (Appeal Br. 5–6; see also id. at 8–9). But, we are not persuaded that these are technological improvements as opposed to improvements in a business process, i.e., booking a reservation for a group of hotel rooms. Although the reverse auction process may be Internet-centric in the sense that the auction is conducted online, facilitating the booking of a group reservation via a reverse action is not a problem rooted in technology or one arising out of computer networks, like the problem in DDR Holdings. Reverse auctions existed before, and still exist outside of computer technology and computer networks, as does the booking of group hotel reservations. And the purported solution here of, at best, generic computer components performing generic computer functions, is not necessarily rooted in computer technology. The Federal Circuit, in DDR Holdings, moreover, expressly cautioned that “not all claims purporting to address Internet-centric challenges are eligible for patent.” DDR Holdings, 773 F.3d at 1258. And the court contrasted the claims in DDR Holdings to those at issue in Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709 (Fed. Cir. 2014) in that, in DDR Holdings, the computer network was not operating in its “normal, expected manner” and Appeal 2018-005690 Application 10/707,733 14 the claims did not “recite an invention that is . . . merely the routine or conventional use of the Internet.” Id. at 1258–59. Here, we do not find, and Appellant does not identify, any analogous modification to the routine and conventional functioning of computer network technology. At best, the claimed invention appears to use generic computer components to perform an abstract business practice (i.e., booking a reservation for a group of hotel rooms). Considered in light of the Specification, the claimed invention clearly appears focused on achieving a business objective (i.e., eliminating many of the restrictions imposed by traditional manual and automated booking processes while reducing the time required to alert hotels to group reservation requests and search wholesaler inventory (see Spec. ¶¶ 1–2)), and not on any claimed means for accomplishing this goal that improves technology. We also are not persuaded of Examiner error to the extent Appellant maintains that claim 106 is patent eligible because the claim poses no risk of preemption (Appeal Br. 9). There is no dispute that the Supreme Court has described “the concern that drives [the exclusion of abstract ideas from patent-eligible subject matter] as one of pre-emption.” Alice Corp., 573 U.S. at 216. Yet, characterizing preemption as a driving concern for patent eligibility is not the same as characterizing preemption as the sole test for patent eligibility. “The Supreme Court has made clear that the principle of preemption is the basis for the judicial exceptions to patentability” and “[f]or this reason, questions on preemption are inherent in and resolved by the § 101 analysis.” Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015) (citing Alice Corp., 573 U.S. at 216). “[P]reemption Appeal 2018-005690 Application 10/707,733 15 may signal patent ineligible subject matter [but] the absence of complete preemption does not demonstrate patent eligibility.” Id. Responding to the Examiner’s Answer, Appellant asserts in the Reply Brief that the present claims, similar to the claims at issue in Finjan, Inc. v. Blue Coat Systems, Inc., 879 F.3d 1299 (Fed. Cir. 2018), “allow[ ] for computers to do things they were previously unable to do by improving computer-to-computer interaction in the context of online group travel” (Reply Br. 6). And, pointing paragraph 2 of the Specification, Appellant argues that “[i]t is only through the solutions described in Claims 88–110 that disparate computer systems are able to effectively interact with one another in the context of online group travel” (id. at 6–7). That argument is not persuasive at least because it is not commensurate with the scope of the claim. We find nothing in claim 106, nor does Appellant direct us to anything in claim 106, that provides a solution that enables disparate computer systems to effectively interact with each other. We also find nothing in the Specification that attributes an improvement in computer to computer interaction to the claimed invention. We conclude, for the reasons set forth above, that claim 106 recites a method of organizing human activity, i.e., an abstract idea, and that the additional elements recited in the claim are no more than generic computer components used as tools to perform the abstract idea of performing a reverse auction. As such, they do not integrate the recited abstract idea into a practical application. See Alice Corp., 573 U.S. at 223–24 (“[W]holly generic computer implementation is not generally the sort of ‘additional featur[e]’ that provides any ‘practical assurance that the process is more than a drafting effort designed to monopolize the [abstract idea] itself.’” (quoting Appeal 2018-005690 Application 10/707,733 16 Mayo, 566 U.S. at 77)). Accordingly, we agree with the Examiner that claim 106 is directed to an abstract idea. Step Two of the Mayo/Alice Framework (2019 Revised Guidance, Step 2B) Having determined under step one of the Mayo/Alice framework that claim 106 is directed to an abstract idea, we next consider under Step 2B of the 2019 Revised Guidance, the second step of the Mayo/Alice framework, whether claim 106 adds specific limitations beyond the judicial exception that are not “well-understood, routine, conventional” activity in the field, or simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. As described above, the only claim elements beyond the abstract idea are the “computer database,” “one or more computer servers,” “server administrative monitoring application,” and “network.” Appellant cannot reasonably deny, nor does Appellant, that the operation of these components is well-understood, routine, and/or conventional, where, as here, there is nothing in the Specification to indicate that the operations recited in claim 106 require any specialized hardware or inventive computer components or that the claimed invention is implemented using anything other than generic computer components to perform generic computer functions, e.g., receiving, processing, and transmitting information. Indeed, the Federal Circuit, in accordance with Alice, has “repeatedly recognized the absence of a genuine dispute as to eligibility” where claims have been defended as involving an inventive concept based “merely on the idea of using existing computers or the Internet to carry out conventional processes, with no alteration of computer functionality.” Berkheimer v. HP Inc., Appeal 2018-005690 Application 10/707,733 17 890 F.3d 1369, 1373 (Fed. Cir. 2018) (Moore, J., concurring) (citations omitted); see also BSG Tech LLC v. BuySeasons, Inc., 899 F.3d 1281, 1291 (Fed. Cir. 2018) (“BSG Tech does not argue that other, non-abstract features of the claimed inventions, alone or in combination, are not well-understood, routine and conventional database structures and activities. Accordingly, the district court did not err in determining that the asserted claims lack an inventive concept.”). We are not persuaded, on the present record, that the Examiner erred in rejecting independent claim 106 under 35 U.S.C. § 101. Therefore, we sustain the Examiner’s rejection of claim 106, and claims 88–105 and 107– 110, which fall with claim 106. Indefiniteness In rejecting claims 88–110 under 35 U.S.C. § 112, second paragraph, the Examiner takes the position that the meaning of wherein the performance of the reverse auction, receipt of the plurality of bids including receipt of the at least one bid that is at a higher rate than the previously submitted bid and the provision of the contact information via the network connection for the bidding party of the accepted bid to the at least one of the plurality of potential buyers facilitates a booking of the hotel reservation [,] as recited in claim 88, and similarly recited in claims 103 and 106 is “unclear as it [i.e., the claim language] doesn’t appear to be a complete thought” (Non-Final Act. 4). Appellant maintains, and we agree, that a person of ordinary skill in the art would understand what is claimed when the claims are read in light of the Specification, particularly including paragraph 2 (Appeal Br. 9–11), i.e., Appeal 2018-005690 Application 10/707,733 18 that the reverse auction is conducted and bids received as part of a process intended to facilitate the booking of a hotel reservation. Therefore, we do not sustain the Examiner’s rejection of claims 88– 110 under 35 U.S.C. § 112, second paragraph. See Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986) (The test for definiteness under 35 U.S.C. § 112, second paragraph, is whether “those skilled in the art would understand what is claimed when the claim is read in light of the specification.”). Obviousness We are persuaded by Appellant’s argument that the Examiner erred in rejecting claims 88 and 103 under 35 U.S.C. § 103(a) because none of Moshal, Hole, Ghouri, Norrid, and Pathak, individually or in combination, discloses or suggests that “the received bids comprise[ ] at least one bid that is at a higher rate than a previously submitted bid” and that “the accepted bid may comprise the at least one bid that is at the higher rate than the previously submitted bid,” as recited in limitations (g) and (i) of claim 88, and similarly recited in claim 103.6 The Examiner cites paragraphs 44, 67, 88, and 89 of Moshal as disclosing the argued limitations (Non-Final Act. 6). Yet, although Moshal discloses various auction types, we find nothing in the cited portions of Moshal that discloses or suggests a reverse auction wherein “the received bids comprise[ ] at least one bid that is at a higher rate than a previously submitted bid” and “the accepted bid may comprise the at least one bid that 6 Independent claim 106 also includes substantially similar language. Appeal 2018-005690 Application 10/707,733 19 is at the higher rate than the previously submitted bid,” as called for in independent claims 88, 103, and 106. In view of the foregoing, we do not sustain the Examiner’s rejection under 35 U.S.C. § 103(a) of independent claims 88, 103, and 106; for the same reasons, we also do not sustain the Examiner’s rejection of claim 89, which depends from independent claim 88.7 CONCLUSION In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 88–110 101 Eligibility 88–110 88–110 112, second paragraph Indefiniteness 88–110 88, 89, 103, 106 103(a) Moshal, Hole, Ghouri, Norrid, Pathak 88, 89, 103, 106 Overall Outcome 88–110 7 Although the Examiner did not include claim 89 in the Examiner’s identification (at page 5 of the Non-Final Office Action) of the claims rejected under 35 U.S.C. § 103(a), the Examiner’s rejection of claim 89 is evident from the Examiner’s discussion of claim 89 in the Non-Final Office Action at pages 7–8. It also is evident from the Examiner’s indication that “Claims 90–102, 104–105 and 107–110 are not rejected with prior art” that claim 106, which also was not included in the Examiner’s identification, is among the claims rejected under § 103(a). Appeal 2018-005690 Application 10/707,733 20 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)(1)(iv). AFFIRMED Copy with citationCopy as parenthetical citation