Daniel RiscallaDownload PDFPatent Trials and Appeals BoardAug 22, 201913873079 - (D) (P.T.A.B. Aug. 22, 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. 13/873,079 04/29/2013 Daniel Riscalla CME-0203 3606 23410 7590 08/22/2019 Vista IP Law Group LLP 100 Spectrum Center Drive Suite 900 IRVINE, CA 92618 EXAMINER GEBREMICHAEL, BRUK A ART UNIT PAPER NUMBER 3715 MAIL DATE DELIVERY MODE 08/22/2019 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 DANIEL RISCALLA __________ Appeal 2017-010527 Application 13/873,079 Technology Center 3700 __________ Before LINDA E. HORNER, JOHN C. KERINS, and WILLIAM V. SAINDON, Administrative Patent Judges. KERINS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Daniel Riscalla (Appellant) appeals under 35 U.S.C. § 134(a) from the Examiner’s final decision rejecting claims 1–20. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. THE INVENTION Appellant’s invention relates to a method and system for ordering prepared food products via a network. Spec. 1:9–10. The invention additionally relates to a method and system allowing the customer to select a Appeal 2017-010527 Application 13/873,079 2 desired vendor location, and a desired physical location for delivery (drop- off) and drop-off time, based upon a prearranged course set by the selected vendor. Spec. 5:14–20. Claims 1, 10, 13, and 17 are independent. Claim 1 is illustrative and is reproduced below: 1. A method for ordering prepared food products via a network using a first wireless electronic device of a customer ordering the prepared food products, comprising: presenting, on a display of the first wireless electronic device of the customer, a menu of available prepared food products; selecting, using an interface of the first wireless electronic device, one or more prepared food products to be included in an order; indicating, using the interface, that the order is complete; selecting, using the interface, a desired vendor location for a vendor to fulfill the order; presenting, on the display, a drop-off menu for the selected vendor location including a schedule set in advance by the vendor including a) a plurality of set physical locations available for the selected vendor location to drop-off an order, the plurality of set physical locations located on a prearranged course for the selected vendor location and b) for each physical location, a plurality of set drop-off times available for the selected vendor location to drop-off an order at the respective physical location; selecting, using the interface, a desired physical location and a desired drop-off time from the drop-off menu; receiving a selection of one or more added food items to be added to the order from a second wireless electronic device via a wireless communication using a same prepared food ordering software application on both the first and second wireless electronic devices; and transmitting the order including the one or more selected food products and the one or more added food items via a network to Appeal 2017-010527 Application 13/873,079 3 a vendor server for the desired vendor location to arrange delivery of the order to the desired physical location at the desired drop-off time. THE REJECTION Claims 1–20 stand rejected under 35 U.S.C. § 101 as being directed to patent-ineligible subject matter. Final Act. 2. Rejections of certain claims under 35 U.S.C. § 112, second paragraph, and under 35 U.S.C. § 103(a) appearing in the Final Action were withdrawn by the Examiner. Ans. 2. ANALYSIS Appellant argues claims 1–20 together as a group. See Appeal Br. 11–21; Reply Br. 2–9. We select claim 1 as representative of the group, and claims 2–23 stand or fall with claim 1. An invention is patent-eligible if it claims a “new and useful process, machine, manufacture, or composition of matter.” 35 U.S.C. § 101. However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include implicit exceptions: “[l]aws of nature, natural phenomena, and abstract ideas” are not patentable. E.g., Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014). In determining whether a claim falls within an excluded category, we are guided by the Supreme Court’s two-step framework, described in Mayo and Alice. Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with that framework, we first determine what concept the claim is “directed to.” See Alice, 573 U.S. at 219 (“On their face, the claims before us are drawn to the concept of Appeal 2017-010527 Application 13/873,079 4 intermediated settlement, i.e., the use of a third party to mitigate settlement risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4 in petitioners’ application explain the basic concept of hedging, or protecting against risk.”). Concepts determined to be abstract ideas, and thus patent ineligible, include certain methods of organizing human activity, such as fundamental economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611); mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and mental processes (Gottschalk v. Benson, 409 U.S. 63, 69 (1972)). Concepts determined to be patent eligible include physical and chemical processes, such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 192 (1981)); “tanning, dyeing, making waterproof cloth, vulcanizing India rubber, smelting ores” (id. at 184 n.7 (quoting Corning v. Burden, 56 U.S. 252, 267–68 (1854))); and manufacturing flour (Benson, 409 U.S. at 69 (citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))). In Diehr, the claim at issue recited a mathematical formula, but the Supreme Court held that “[a] claim drawn to subject matter otherwise statutory does not become nonstatutory simply because it uses a mathematical formula.” Diehr, 450 U.S. at 176; see also id. at 192 (“We view respondents’ claims as nothing more than a process for molding rubber products and not as an attempt to patent a mathematical formula.”). Having said that, the Supreme Court also indicated that a claim “seeking patent protection for that formula in the abstract . . . is not accorded the protection of our patent laws, . . . and this principle cannot be circumvented by attempting to limit the use of the formula to a particular technological environment.” Id. (citing Benson and Flook); see, e.g., id. at 187 (“It is now Appeal 2017-010527 Application 13/873,079 5 commonplace that an application of a law of nature or mathematical formula to a known structure or process may well be deserving of patent protection.”). If the claim is “directed to” an abstract idea, we turn to the second step of the Alice and Mayo framework, where “we must examine the elements of the claim to determine whether it contains an ‘inventive concept’ sufficient to ‘transform’ the claimed abstract idea into a patent- eligible application.” Alice, 573 U.S. at 221 (quotation marks omitted). “A claim that recites an abstract idea must include ‘additional features’ to ensure ‘that the [claim] is more than a drafting effort designed to monopolize the [abstract idea].’” Id. (quoting Mayo, 566 U.S. at 77). “[M]erely requir[ing] generic computer implementation[] fail[s] to transform that abstract idea into a patent-eligible invention.” Id. The PTO recently published revised guidance on the application of § 101. See 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (USPTO Jan. 7, 2019) (“Guidance”). Under that guidance, we first look to whether the claim recites: (1) any judicial exceptions, including certain groupings of abstract ideas (i.e., mathematical concepts, certain methods of organizing human activity such as a fundamental economic practice, or mental processes); and (2) additional elements that integrate the judicial exception into a practical application (see MPEP § 2106.05(a)–(c), (e)–(h)). Only if a claim (1) recites a judicial exception and (2) does not integrate that exception into a practical application, do we then look to whether the claim: Appeal 2017-010527 Application 13/873,079 6 (3) adds a specific limitation beyond the judicial exception that is not “well-understood, routine, conventional” in the field (see MPEP § 2106.05(d)); or (4) simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. See Guidance, 84 Fed. Reg. at 56. The Examiner determines that claim 1 is directed to patent-ineligible subject matter based on a judicial exception, i.e., an abstract idea, without adding significantly more to the judicial exception. Final Act. 2. More specifically, the Examiner determines that claim 1 is directed to an abstract idea involving a method of organizing human activity in the form of managing orders, likening the method to meal planning, or using categories to organize, store and transmit information. Id. at 2–3. The Examiner determines that claim 1 does not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additionally recited elements, which include using wireless electronic devices, a display, and a server, for example, are generic computing elements that are known and conventional, and perform the basic functions of a computer that would be needed to apply the abstract idea. Id. at 4. According to the Examiner, the claim when viewed as a whole, does not include additional elements that provide meaningful limitations so as to transform the abstract idea into a patent-eligible application of the abstract idea. Id. at 5. Appellant contends that claim 1 is not directed to an abstract idea, and that the Examiner has misapplied the “directed to” inquiry by defining the Appeal 2017-010527 Application 13/873,079 7 invention at an overly high level of abstraction. See, e.g., Appeal Br. 13; Reply Br. 2–3. Appellant argues that the series of steps recited in claim 1 “provide a substantial increase in the efficiency of delivering food orders as compared to delivering to customer’s locations without any predetermined schedule.” Appeal Br. 14. Appellant characterizes limitations involving selection of a drop-off location from predetermined locations along a prearranged course, and selection of a drop-off time from a plurality of predetermined times for a selected vendor, as being “concrete rules and specifications which provide significant improvement in product delivery technology.” Id. at 16; Reply Br. 3. Viewing the Examiner’s rejection and Appellant’s position through the lens of the Office’s recent guidance, we first determine whether the claim recites a judicial exception, and then, if it does, determine whether the claim, considered as a whole, is directed to that exception. Claim 1 recites a method for ordering prepared food products. Specifically, claim 1 recites steps of: presenting a menu on a display from which to order; selecting products to be included in an order; indicating that the order is complete; selecting a desired vendor location for order fulfillment; presenting a drop-off menu for the selected vendor that includes a plurality of physical locations available for order drop-off, which locations are on a prearranged course, and a plurality of drop-off times associated with each physical location; selecting a desired physical location and drop-off time; receiving a selection of one or more food items to be added to the order; and transmitting the order to arrange for delivery of the order to the selected location at the selected drop-off time. Appeal Br., Claims Appendix. These steps involve a customer or customers interacting with a Appeal 2017-010527 Application 13/873,079 8 vendor, with the customer(s) making various selections of food products desired and selections specifying the location where, and time at which, the selected food products are to be delivered, with the selections being limited to those offered on a food product menu and a delivery/time drop-off menu. The steps result in the ordering and delivery of goods (food products), which are steps involved in a commercial transaction, as well as steps in managing transactions between entities, either of which amounts to a method of organizing human activity, and, therefore, an abstract idea. See Guidance, 84 Fed. Reg. at 52. That the options for delivery location and delivery drop- off time are based, at least in part, on a prearranged course and schedule set in advance by the vendor does not change the nature of the transaction into something that would be considered non-commercial. Having concluded that claim 1 recites a judicial exception, i.e., an abstract idea, we next consider whether the claim recites additional elements that integrate the judicial exception into a practical application. The only additional elements recited in claim 1, beyond the abstract idea, are a network, a first wireless electronic device having a display and an interface to make selections from menus, a second wireless electronic device, and a vendor server for receiving orders from the first and second wireless electronic devices. Appeal Br., Claims Appendix. But, as the Examiner observes, these elements are “no more than the recitation of generic computer structure that serves to perform generic computer functions.” Final Act. 4. Notably, the Specification does not suggest that these computer components are improved from a technical perspective, or that they operate differently than they ordinarily would. For example, we find no indication Appeal 2017-010527 Application 13/873,079 9 in the Specification, nor does Appellant direct us to any indication, that the operations recited in claim 1 require any specialized computer hardware or other inventive computer components, i.e., a particular machine; nor 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, aside from attorney argument, that attributes an improvement in technology and/or a technical 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. As noted above, Appellant argues that the invention as reflected in the claims “provides a significant improvement in food delivery technology because it provides a substantial increase in the efficiency of delivering food orders as compared to delivering to customer’s locations without any predetermined schedule.” Appeal Br. 14. And Appellant asserts that the inclusion of steps for selecting a drop-off location from a group of predetermined available drop-off locations along a prearranged course, and for selecting a drop off time from a group of predetermined drop-off times, constitute “concrete rules and specifications which provide significant improvements in product delivery technology” (id. at 16), and “enable[] the Appeal 2017-010527 Application 13/873,079 10 computerization of an improved food ordering and delivery process.” Reply Br. 3. We, however, fail to see how, and Appellant does not explain how, applying constraints on a customer’s choices for drop-off of orders, based upon a vendor dictating a particular delivery route and particular times for stops on that delivery route, somehow constitutes an improvement in the operation of a computer or any other particular technology. Citing McRO, Inc. v. Bandai Namco Games Am., Inc., 837 F.3d 1299 (Fed. Cir. 2016), Appellant asserts that the Federal Circuit held that a claimed invention utilizing specific rules in a process directed to a patentable, technological improvement over existing manual techniques is not directed to an abstract idea, but instead qualifies as patent-eligible subject matter. Reply Br. 5. Appellant attempts to draw a parallel between claim 1 and the claims in McRO. We do not agree, however, that any such parallel exists. Appellant argues that claim 1, like the claims in McRO, enable computing systems to perform functions not previously performable by a computer. Id. at 7 (“Appellant’s claimed invention also includes specific rules and constraints which provide a technological improvement allowing the computer automation of a food delivery ordering process and delivery, which was previously performed manually, or at least partially manually.”). But, we are not persuaded that claim 1 includes “rules” that enable a computer to schedule deliveries at particular locations and at particular times in the same way the specific rules enabled the computer in McRO to generate the computer animated characters. We also find no evidence of record that the present situation is like the one in McRO, in which computers Appeal 2017-010527 Application 13/873,079 11 were unable to make certain subjective determinations, i.e., regarding morph weight and phoneme timings, which could only be made prior to the claimed invention by human animators. The patent at issue in McRO describes that, prior to the claimed invention, character animation and lip synchronization were accomplished by human animators, with the assistance of a computer, and involved the use of a so-called “keyframe” approach in which animators set appropriate parameters, i.e., morph weights, at certain important times, i.e., “keyframes,” in order to produce accurate and realistic lip synchronization and facial expressions. McRO, 837 F.3d. at 1305. Animators knew what phoneme a character pronounced at a given time from a time-aligned phonetic transcription (a “timed transcript”). Id. In accordance with the prior technique, animators, using a computer, thus, manually determined the appropriate morph weight sets for each keyframe based on the phoneme timings in the timed transcript. Id. In McRO, the improvement in computer animation was realized by using “rules, rather than artists [i.e., human animators], to set the morph weights and transitions between phonemes” (id. at 1313), i.e., in McRO, the invention used “rules to automatically set a keyframe at the correct point to depict more realistic speech, achieving results similar to those previously achieved manually by animators.” Id. at 1307. The rules in McRO thus allowed the computer to produce accurate and realistic synchronization in animated characters that could only previously be produced by humans. We are not persuaded that any comparable situation is presented here. The claimed invention is focused on addressing a business objective, i.e., improving efficiency in the delivery of food products, and not on any Appeal 2017-010527 Application 13/873,079 12 claimed means for accomplishing this goal that improves technology. Further, Appellant does not take the position that, prior to the present invention, it was not possible to perform food delivery services using a computer, as was the case with animation synchronized to speech in McRO, and maintains only that, regardless of whether food delivery could have been fully automated using a computer, standard industry practice was to perform all or some functions of food delivery manually. Reply Br. 7. We conclude that claim 1 recites a commercial interaction, which is a method of organizing human activity, which is one of the groupings of subject matter identified by the courts as 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 effecting the ordering and scheduling delivery of food products. 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 feature[e]’ that provides any ‘practical assurance that the process is more than a drafting effort designed to monopolize the [abstract idea] itself.”’ (quoting Mayo, 566 U.S. at 77)). Accordingly, we agree with the Examiner that claim 1 is directed to an abstract idea. Having determined that claim 1 is directed to an abstract idea, we next consider whether claim 1 adds specific limitations beyond the judicial exception that are not “well-understood, routine, conventional” 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. Appeal 2017-010527 Application 13/873,079 13 The Examiner determined here, and we agree, that the only claim elements beyond the abstract idea are the claimed wireless electronic devices and vendor server operating on a network, which as the Examiner observes, are “no more than the recitation of generic computer structure that serves to perform generic computer functions.” Final Act. 4. This determination is amply supported by and fully consistent with the Specification. See, e.g., Spec. 10–12, Fig. 1. Appellant cannot reasonably contend, nor does Appellant argue, that there is a genuine issue of material fact regarding whether operation of the claimed wireless electronic devices and vendor server are well-understood, routine, or conventional, where, as here, there is nothing in the Specification to indicate that the operations recited in claim 1 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, storing, and processing 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., 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 Appeal 2017-010527 Application 13/873,079 14 activities. Accordingly, the district court did not err in determining that the asserted claims lack an inventive concept.”). We are therefore not persuaded, on the present record, that the Examiner erred in rejecting claim 1 under 35 U.S.C. § 101. Therefore, we sustain the Examiner’s rejection of claim 1, and of claims 2–20, which fall with claim 1. DECISION The rejection of claims 1–20 under 35 U.S.C. § 101 as being directed to patent-ineligible subject matter 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). AFFIRMED Copy with citationCopy as parenthetical citation