Ex Parte Alegre et al

Patent Trial and Appeal Board

Sep 21, 2017

13489341 (P.T.A.B. Sep. 21, 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.
13/489,341 06/05/2012 Joe M. Alegre 20039.0001US01 2473
44306 7590 09/22/2017
WITHERS & KEYS, LLC
P. O. BOX 71355
MARIETTA, GA 30007-1355
EXAMINER
SEIBERT, CHRISTOPHER B
ART UNIT PAPER NUMBER
3625
MAIL DATE DELIVERY MODE
09/22/2017 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 JOE M. ALEGRE and TIMOTHY A. KELLY
____________

Appeal 2016-008004
Application 13/489,341
Technology Center 3600
____________

Before HUNG H. BUI, BETH Z. SHAW, and
AARON W. MOORE, Administrative Patent Judges.

MOORE, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Appellants1 appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 11–19 and 30, which are all of the pending claims. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.

THE INVENTION
The application is directed to “systems that provide information
related to an item that is for sale” and, “[m]ore particularly, . . . to methods
and systems that provide information in relation to a potential buyer being in
physical proximity to the item for sale.” (Spec. ¶ 1.) Claim 11, reproduced
below, exemplifies the subject matter on appeal:
11. A method of providing information related to an item that is
for sale, comprising:
receiving electronic submissions of access information, the
access information being indicative of a sender of the electronic
submission being in physical proximity to the item;
maintaining an electronic registry of electronic addresses re-
lated to the electronic submissions of the access information that
are received, and in response to receiving the electronic submis-
sions, associating the electronic addresses to the item within the
electronic registry;
in further response to receiving the electronic submissions of
access information, transforming the sales information from an
electronic sales database that associates the sales information to
the item to a first electronic message that is addressed to the elec-
tronic addresses associated with the item within the registry;
outputting the first electronic message over a computer net-
work to the electronic addresses; and

1 Appellants identify Zipflip, LLC as the real party in interest. (App. Br. 3.)
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upon electronically detecting an update to the sales infor-
mation associated with the item within the sales database, trans-
forming the update of the sales information within the electronic
sales database to a second electronic message addressed to the
electronic messages associated with the item within the registry;
and
outputting the second electronic message containing the up-
dated sales information over the computer network to the elec-
tronic addresses of the registry.

THE REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Robertson US 6,609,106 B1 Aug. 19, 2003
Rydbeck US 6,922,567 B1 July 26, 2005
Liu US 2007/0208879 A1 Sept. 6, 2007
Jagemann et al. US 2011/0264460 A1 Oct. 27, 2011
Castro et al. US 2012/0232995 A1 Sept. 13, 2012

THE REJECTIONS
1. Claims 11–19 and 30 stand rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
(See Final Act. 2–3.)
2. Claims 11–19 and 30 stand rejected under 35 U.S.C. § 112,
second paragraph, as indefinite for failing to particularly point out and
distinctly claim the subject matter which the inventor or a joint inventor
regards as the invention. (See Final Act. 3.)
3. Claims 11–19 and 30 stand rejected under 35 U.S.C. § 101
“because the claimed invention is directed to a judicial exception (i.e., a law
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of nature, a natural phenomenon, or an abstract idea) without significantly
more.” (See Final Act. 4–5.)
4. Claims 11, 12, 14, and 17–19 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Castro and Jagemann. (See Final Act. 5–7.)
5. Claim 13 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Castro, Jagemann, and Liu. (See Final Act. 8.)
6. Claims 15 and 16 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Castro, Jagemann, and Rydbeck. (See Final Act. 9–10.)
7. Claim 30 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Castro, Jagemann, and Robertson. (See Final Act. 10–11.)

ANALYSIS
Written Description
The Examiner finds “[c]laim 11 recites the amended limitations
‘transforming the sales information from an electronic sales database’ and
‘transforming the update of the sales information,’” but “[t]here is no
support for these amended limitations in the specification,” because “[t]he
specification describes placing the data into electronic messages and
transmitting the data (ex. pp. 8-10) but does not describe ‘transforming’ the
data or how the ‘transforming’ step is performed.” (Final Act. 2–3.)
Appellants contend pages 8–10 of the Specification support the claim
recitations of transforming sales information from a sales database to an
electronic message because they describe that “[d]ata stored in a database is .
. . transformed into an electronic message that one of ordinary skill in the art
knows has a particular format, such as a SMS text message or an email,
including having header information used in delivering the electronic
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message” and that “one of ordinary skill in the art knows exactly what is
meant by transforming sales information from a sales database to an
electronic message.” (App. Br. 4–5.)
“Whether a patent claim satisfies the written description requirement
of 35 U.S.C. § 112, paragraph 1 depends on whether the description ‘clearly
allow[s] persons of ordinary skill in the art to recognize that [the inventor]
invented what is claimed.’” Inphi Corp. v. Netlist, Inc., 805 F.3d 1350, 1355
(Fed. Cir. 2015) (quoting Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1562–
63 (Fed. Cir. 1991)). Here, we agree with Appellants that the description is
sufficient to clearly allow one of skill in the art “to recognize that the
inventor invented what is claimed.” For example, paragraph 29 describes
that “[t]he computer server 101 receives the electronic submission and then
performs a look-up of the access information to find the associated item
listing and return the sales information of the item listing to the device 142
of the potential buyer at a return action 210.” The paragraph further
explains that “[t]he sales information that is returned may differ depending
upon the form of electronic submission that has been received” and “[f]or
instance, if a text message has been received, then a return text message may
include only text or additionally a limited amount of multi-media
information.” Because we agree with Appellants that, in view of this
disclosure, one of ordinary skill in the art would understand that
“transforming” refers to the described activity of taking data from a sales
database and putting it into an electronic message, we do not sustain the
rejection under 35 U.S.C. § 112, first paragraph.
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Indefiniteness
The Examiner finds claim 11 indefinite because “[t]he term
‘transforming’ . . . is used by the claim to mean ‘transmitting,’ while the
accepted meaning is make a thorough or dramatic change in the form,
appearance, or character of an item.” (Final Act. 3.) The Examiner
concludes that “[t]he term is indefinite because the specification does not
clearly redefine the term.” (Id.) Because, as explained above, we do not
agree that ‘transforming’ is used by the claim to mean ‘transmitting,’ we do
not sustain the rejection under 35 U.S.C. § 112, second paragraph.
Patent Eligibility
The Examiner finds “[t]he claims are directed to providing item
information which is considered to be an abstract idea inasmuch as such
activity is considered both a fundamental economic practice and a method of
organizing human activity.” (Final Act. 4.) The Examiner further finds
“[t]he elements of the instant process, when taken alone, each execute in a
manner routinely and conventionally expected of these elements” and “when
taken in combination, together do not offer substantially more than the sum
of the functions of the elements when each is taken alone.” (Id. at 4.) The
Examiner concludes there are no “meaningful limitation(s) to transform the
abstract idea into a patent eligible application . . . such that the claim(s)
amounts to significantly more than the abstract idea itself” and that, as such,
the claims are directed to non-statutory subject matter. (Id. at 5.)
Appellants contest the Section 101 rejection with five arguments that
the claims are not directed an abstract idea (C.1.a–e, App. Br. 5–7), three
arguments intended to show that the claims provide “provide significantly
more” than the abstract idea (C.2.a–c, App. Br. 7–9), and one procedural
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argument (C.3, App. Br. 8). We address these contentions in the order
presented, referenced by their headings in lieu of page citations.
[C.1.a.] The argument that “[t]he claims are not ‘directed to’ an
abstract idea” because they “include several elements that involve technical
actions including receiving electronic submissions, performing database
tasks including associating electronic addresses to items, outputting
electronic messages, and transforming information from a database to an
electronic message” is not persuasive because these various steps are all
simply the manipulation of data, which, without more, is not eligible subject
matter. See, e.g., Elec. Power Grp. v. Alstom S.A., 830 F.3d 1350, 1353
(Fed. Cir. 2016) (claims directed to collection, manipulation, and display of
data); Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d
1363, 1370 (Fed. Cir. 2015) (customizing information and presenting it to
users based on particular characteristics); Content Extraction and
Transmission LLC v. Wells Fargo Bank, National Ass’n, 776 F.3d 1343,
1347 (Fed. Cir. 2014) (“collecting data, . . . recognizing certain data within
the collected data set, and . . . storing that recognized data in a memory”).
[C.1.b.] The argument that “[t]he supposed idea of the claim is not a
long-prevalent and fundamental economic practice” because “the claims are
not about completing a sales transaction” but instead “are about providing
information about an item that is for sale” is unpersuasive because
“providing information about an item that is for sale” is, in fact, a
fundamental economic practice, as virtually everyone who has ever
purchased anything (be it land, or car, or a meal) would have done so only
after having been provided with at least some information about it.
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[C.1.c.] We do not agree that the claims are not directed to an
abstract idea because “[t]here is a transformation that is occurring.” As
explained above, manipulation of data alone is an abstract idea.
[C.1.d.] The argument that “[t]he claim is not so broad as to tie up an
entire category of subject matter or preempt others from using the alleged
abstract idea” is insufficient to show error because although “preemption
may signal patent ineligible subject matter, the absence of complete
preemption does not demonstrate patent eligibility.” Ariosa Diagnostics,
Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015). Moreover,
where, as here, “a patent’s claims are deemed only to disclose patent
ineligible subject matter under the [Alice/Mayo] framework . . . , preemption
concerns are fully addressed and made moot.” Id.
[C.1.e.] The argument that “[t]here has been no evidence to show that
the collection of specific tasks set forth in the claim amount to merely an
abstract idea” is also insufficient to show error because there is no
requirement that examiners must provide evidentiary support in every case
before a conclusion can be made that a claim is directed to an abstract idea.
See, e.g., USPTO July 2015 Update: Subject Matter Eligibility,2 p. 6
(explaining that “courts do not rely on evidence that a claimed concept is a
judicial exception, and in most cases resolve the ultimate legal conclusion on
eligibility without making any factual findings”). While evidence may be
helpful in certain situations where, for instance, specific facts are in dispute,
it is not always necessary. It is not necessary in this case, particularly given

2 Presently available at https://www.uspto.gov/patent/laws-and-regulations/
examination-policy/subject-matter-eligibility.
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that Appellants readily admit their claims “are about providing information
about an item that is for sale.” Appellants also do not identify any facts, or
types of facts, that would tend to show that these claims are not abstract.
[C.2.a.] We do not agree that “controlling access to the updates to the
sales information for the item that is for sale based on the submission that
proves proximity being used to generate the registry of potential buyers for
the item” is an inventive concept that makes the claim eligible. The concept
of providing information about a product to someone who is or was
physically near the product is still just an abstract idea.
[C.2.b.] We also do not agree that the “claim goes beyond merely
reciting the abstract idea with an instruction to just apply it” because it
“provide[s] the very specific actions to be taken in the electronic system.”
Separately reciting the individual steps required to implement an abstract
idea on a conventional computer does not make the abstract idea patent
eligible. See, e.g., Intellectual Ventures I, 792 F.3d at 1370 (“[M]erely
adding computer functionality to increase the speed or efficiency of the
process does not confer patent eligibility on an otherwise abstract idea.”).
[C.2.c.] Lastly regarding the inventive step inquiry, Appellants assert
that “[t]he claims include meaningful recitations that must be considered
together, not just individually” and that “[o]ne must consider there is the
submission with the access information that proves proximity to the item,
together with the building of the registry from received submission, and then
the sending of updated sales information based on the electronic addresses in
that registry.” This again, however, is just a recast expression of the abstract
idea of providing information about a product to an individual who is or was
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near the product. Appellants do not persuade us that the ordered
combination is anything “significantly more” than the abstract idea itself.
[C.3] Appellants additionally argue that “the rejection does not
specifically address each claim in detail,” which, it is claimed, “is not a
permissible manner of rejecting claims under 35 USC 101.” Appellants
refer to claims 15 and 30, relating to a predefined proximity and update
notification triggers, respectively, each of which is alleged to be a “technical
task that provides further inventive concepts.” We are not persuaded. The
USPTO carries its procedural burden when its rejection satisfies the
requirements of 35 U.S.C. § 132 by notifying the applicant of the reasons for
rejection, ‘“together with such information and references as may be useful
in judging of the propriety of continuing the prosecution of [the]
application.’” In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011) (brackets in
original, quoting 35 U.S.C. § 132). Here, the Examiner notified Appellant
that the claims are directed to an ineligible abstract idea, specifically, to the
idea of “providing item information,” where no additional claim elements
“provide meaningful limitation(s) to transform the abstract idea into a patent
eligible application of the abstract idea.” (Final Act. 4–5.) Thus, Appellant
has been notified of the reasons for the rejection with such information “as
may be useful in judging of the propriety of continuing the prosecution of
[the] application,” which is all that is required from a procedural perspective.
Appellants’ paraphrasing of claims 15 and 30 is insufficient to persuade us
that the Examiners’ findings and conclusions should be disturbed as to those
claims.
Because Appellants’ arguments are insufficient to show Examiner
error, we sustain the rejection of claims 11–19 and 30 under Section 101.
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Obviousness
Casto teaches a smartphone based system through which a user may
request information about a particular vehicle. For example, one may use a
smartphone to read a VIN number from a vehicle to receive an offer, a
quote, or other information. (See, e.g., Casto, Figure 5.) Jagemann
describes a secure wedding registry-type system allowing a patient or others
to purchase healthcare products and services. For example, a patient with
cancer may register with the system to create a selection of relevant products
or services that may be purchased by the patient or others for specific stages
or treatment cycles. (See, e.g., Jagemann ¶ 8.)
The Examiner finds that “Castro teaches a method of providing
information related to an item that is for sale,” but does not teach
maintaining an electronic registry of electronic addresses related
to the electronic submissions of the access information that are
received and in response to receiving the electronic submissions,
associating the electronic addresses to the item within the
electronic registry, in further response to receiving the electronic
submissions of access information, transmitting the sales
information from an electronic sales database that associates the
sales information to the item to a first electronic message that is
addressed to the electronic addresses associated with the item
within the registry, outputting the first electronic message over a
computer network to the electronic addresses, upon
electronically detecting an update to the sales information
associated with the item within the sales database, transmitting
the update of the sales information within the electronic sales
database to a second electronic message address to the electronic
messages associated with the item within the registry, and
outputting the second electronic message containing the updated
sales information over the computer network to the electronic
addresses of the registry.
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(Final Act. 5–6.) The Examiner further finds, however, that Jagemann
teaches all of these other elements and that one of ordinary skill in the art
“would have recognized that results of the combination were predictable,
such as ‘the ability to manage the relationship between the catalog
containing targeted products and services, recommenders, and customers,
while maintaining privacy of personal customer data,’ as explicitly
suggested by Jagemann (¶0054).” (Id. at 6–7.)
Appellants argue “the notification associated with the ‘registry’ of
Jagemann . . . is to notify those interested in purchasing items for the
individual that the registry for the individual has been set up” and “[t]his has
nothing to do with sending an electronic message that contains an update to
an item for sale.” (App. Br. 10.)
The Examiner responds that the claimed updating is present in
Jagemann because [A] “[e]ach individual in Jagemann’s registry is
associated with an address (e.g., ¶¶ 0064 and 0089) and a message is sent to
every respective individual, at their provided address, when the sales
information for the item that is associated with them in the registry is
updated,” and [B] Jagemann “teaches that the sales information is updated
by recommendations by experts and peers (e.g., ¶¶ 0008, 0062, 0067, and
0072).” (Ans. 8–9.) “Alternatively,” the Examiner finds “Castro teaches
that sales information is updated in the database and sent to the dealers (e.g.,
¶ 0029), which also reads on the limitation as nothing in the claims requires
that the addresses be customer addresses.” (Id. at 8–9.)
We agree with Appellants. While Jagemann describes sending
messages to individuals notifying them that a registry has been created for a
patient (see, e.g., ¶ 89), we do not see any teaching or suggestion in the cited
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portions of Jagemann that subsequent messages are sent in the case of
updates to the registry. The fact that experts and peers may update
information in the registry does not mean that a message is then sent to the
individuals who registered reflecting the update. While we agree that Castro
similarly describes the concept of updating the database (see, e.g., ¶ 29), the
cited portions of Castro also do not appear to describe sending a message
with the updated information. Thus, although the combination includes
providing a message with information about a product to an end user based
on proximity, and allowing updates to the central database, it does not
include or suggest sending a subsequent message to the end user “upon
electronically detecting an update,” as claimed.
Because we agree with Appellants’ argument, we do not sustain the
rejection of claim 11 under Section 103 and, for the same reasons, we do not
sustain the rejections of claims 12–19 and 30, all of which depend from
claim 11 and thus include the same limitation. Because this issue is
dispositive, we do not reach Appellants’ other prior art arguments.

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DECISION
The rejections of claims 11–19 and 30 under Section 112 are reversed.
The rejections of claims 11–19 and 30 under Section 101 are affirmed. The
rejections of claims 11–19 and 30 under Section 103 are reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED3

3 Because we affirm at least one ground of rejection with respect to each
claim on appeal, the Examiner’s decision rejecting claims 11–19 and 30 is
affirmed. See 37 C.F.R. § 41.50(a)(1).