13472246 (P.T.A.B. Apr. 12, 2017)

Ex Parte Brown

Patent Trial and Appeal BoardApr 12, 2017

13472246 (P.T.A.B. Apr. 12, 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. 13/472,246 05/15/2012 Charles P. Brown BR02-001-01 2175 7590 04/12/2017 Charles P. Brown 2910 N. River Walk Drive Chicago, IL 60618 EXAMINER RUHL, DENNIS WILLIAM ART UNIT PAPER NUMBER 3689 MAIL DATE DELIVERY MODE 04/12/2017 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 CHARLES P. BROWN __________ Appeal 2015-006969 Application 13/472,246 Technology Center 3600 ____________ Before HUBERT C. LORIN, BIBHU R. MOHANTY, and BRADLEY B. BAYAT, Administrative Patent Judges. LORIN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Charles P. Brown (Appellant) seeks our review under 35 U.S.C. § 134 of the final rejection of claims 34–53 and 55–58.1 We have jurisdiction under 35 U.S.C. § 6(b) (2002). SUMMARY OF DECISION We REVERSE and enter a NEW GROUND OF REJECTION. 1 The Final Office Action mailed July 15, 2013 identified claims 34–58 as rejected, but claim 54 is canceled. See amendment filed Mar. 19, 2013. Appeal 2015-006969 Application 13/472,246 2 THE INVENTION Claim 34, reproduced below with bracketed numerals added, is illustrative of the subject matter on appeal. 34. A method comprising: [1] receiving a one-time fee payment from a user in exchange for continued, periodic pre-payment of any future renewal fees, automatically by a server network device, required to maintain registration of a first registered domain name with a first domain name registrar; [2] storing, by the server network device in a database, a record including information associated with the first registered domain name, the database including a plurality of records, each record corresponding to a respective registered domain name associated with a respective one-time fee payment from a respective user for continued, periodic pre-payment of any respective future renewal fees, automatically by the server network device, required to maintain registration of the respective registered domain name; [3] automatically generating, by the server network device based on the database, a first list of registered domain names that will expire by a first date unless a respective renewal fee is paid to a respective corresponding domain name registrar by the first date for each registered domain name of the first list, the first list including the first registered domain name; [4] automatically paying electronically, by the server network device and by the first date, a first renewal fee to the first domain name registrar for renewing the first registered domain name, without requiring any payment from the user in addition to the one-time fee payment; [5] determining, by the server network device, that all respective renewal fees for the generated first list of registered domain names were paid to the respective corresponding domain name registrar by the first date; [6] automatically generating, by the server network based on the database, a second list of registered domain names that will expire by Appeal 2015-006969 Application 13/472,246 3 a second date unless a respective renewal fee is paid to a respective corresponding domain name registrar by the second date for each registered domain name of the second list, the second list including the first registered domain name; and [7] automatically paying electronically, by the server network device and by the second date, a second renewal fee to the first domain name registrar for renewing the first registered domain name, without requiring any payment from the user in addition to the one- time fee payment. THE REJECTIONS The Examiner relies upon the following as evidence of unpatentability: Loeb et al. (hereinafter “Loeb”) Fellman US 6,014,641 US 2002/0065903 A1 Jan. 11, 2000 May 30, 2002 Staff Writer, Tonga to offer 100-year domain name registrations, CNET News (Sept. 22, 1999) (hereinafter “Tonga”). Specials Wire, Lifetime service now offered, Times-Colonist (Jan. 28, 1997) (hereinafter “Times-Colonist”). The following rejections are before us for review: 1. Claims 34–53 and 55–58 stand rejected under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement.2 2 The Final Rejection listed claims 34-54 as being rejected and the body of the rejection discusses claim 58. Final Rej. 2 and 3, respectively. Presumably said rejection was intended to list all of claims 34-58. Also, claim 54 was cancelled. See footnore 1. We have corrected that error, too. Appeal 2015-006969 Application 13/472,246 4 2. Claims 34–53 and 55–58 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Fellman, Loeb, Tonga, and Times-Colonist. ISSUES Did the Examiner err in rejecting claims 34–53 and 55–58 under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement; and claims 34–53 and 55–58 under 35 U.S.C. § 103(a) as being unpatentable over Fellman, Loeb, Tonga, and Times- Colonist? ANALYSIS The rejection of claim 34–53 and 55–58 under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. The Examiner finds that the Specification does not provide support for the limitation “without requiring any payment from the user in addition to the one-time payment fee” in claims 34, 48, and 49 (Final Act. 2–3; Ans. 2– 4). The Appellant argues that paragraphs 60 and 71 of the published version of the application (US 2012/0226606 A1) provide support for the above limitation (App. Br. 15–18; Reply Br. 5–8). Whether a specification complies with the written description requirement of 35 U.S.C. § 112, first paragraph, is a question of fact and is assessed on a case-by-case basis. See, e.g., Purdue Pharma L.P. v. Faulding, Inc., 230 F.3d 1320, 1323 (Fed. Cir. 2000) (citing Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1561 (Fed. Cir. 1991)). The disclosure, as originally filed, need not literally describe the claimed subject matter Appeal 2015-006969 Application 13/472,246 5 (i.e., using the same terms or in haec verba) in order to satisfy the written description requirement. But the Specification must convey with reasonable clarity to those skilled in the art that, as of the filing date, the Appellant was in possession of the claimed invention. See id. Although the Specification does not explicitly disclose “without requiring any payment from the user in addition to the one-time payment fee,” a person of ordinary skill in the art reviewing the Appellant’s Specification, which discloses that the one-time fee is the only necessary fee, would reasonably understand that the invention does not require additional payment from the user, and would have known that the Appellant was in possession of the claimed subject matter as of the filing date. The Examiner also finds that the Specification does not provide support for the limitation “automatically” in claims 43, 47, and 53 (Final Act. 3). The Appellant argues that paragraphs 42, 56–60, and 71 of the published version of the application provide support for the above limitation (App. Br. 17; Reply Br. 7). Paragraph 71 discloses “automatic pre-payment and verification of registration fees.” We agree with the Appellant that this disclosure satisfies the written description requirement. Accordingly, the rejection is not sustained. The rejection of claims 34–53 and 55–58 under 35 U.S.C. § 103(a) as being unpatentable over Fellman, Loeb, Tonga, and Times-Colonist. The independent claims are 34, 49, and 58. Appeal 2015-006969 Application 13/472,246 6 The Appellant’s main contention is that the Examiner used impermissible hindsight to reach the claimed subject matter given the cited prior art combination. See App. Br. 19–35; Reply Br. 8–20. We agree. The question is whether one of ordinary skill would have been led to apply Loeb’s subscription model for magazines to Fellman’s domain name registration. The parties agree that Fellman does not disclose any mention of renewing a domain name prior to expiration or payment for any corresponding renewal fees. See, e.g., Final Act. 5. The Examiner states that “[o]ne of ordinary skill in the art would recognize that the fee/payments from the user can be structured in different manners and the third party can themselves decide how they want to structure the payments” (id. at 10) and “[w]ith a domain name registration, it is obvious that nobody wants to let the registration expire . . .” (Id. at 11). In our view, this is insufficient as “some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). The difficulty is that there is insufficient evidence on record supporting the Examiner’s proposed modification of the prior art. For the foregoing reasons, the rejection of claims 34, 49, and 58 is not sustained. A prima facie case of obviousness has not been made out in the first instance by a preponderance of the evidence. Claims 35–48, 50–53, and 55–57 depend from claims 34 and 49, and their rejection is not sustained for the same reasons. NEW GROUND OF REJECTION Appeal 2015-006969 Application 13/472,246 7 Claims 34–53 and 55–58 are rejected under 35 U.S.C. § 101 as being directed to non-statutory subject matter. Alice Corp. Party Ltd. v. CLS Bank International, 134 S. Ct. 2347 (2014) identifies a two-step framework for determining whether claimed subject matter is judicially-excepted from patent eligibility under § 101. According to Alice step one, “[w]e must first determine whether the claims at issue are directed to a patent-ineligible concept,” such as an abstract idea. Id. at 2355. Taking claim 34 as representative of the claims on appeal, the claimed subject matter is directed to paying renewal fees. Paying renewal fees is a method of organizing human activity and/or fundamental economic practice. As such, it is an abstract idea. Step two of Alice 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 2355 (citation omitted). We see nothing in the subject matter claimed –– individually or as an ordered combination –– that transforms the abstract idea of paying renewal fees into an inventive concept. The method of claim 34 includes seven steps of (1) receiving payment, (2) storing data in a database, (3) generating first information (a first list of registered domain names), (4) paying first renewal fees, (5) determining that the first renewal fees were paid, (6) generating second information (a second list of registered domain names), and (7) paying second renewal fees. Appeal 2015-006969 Application 13/472,246 8 All of the claim limitations are well-understood, routine, conventional activities previously known to the industry. The information receiving, storing, and generating are known information gathering operations and thus add little to patentably transform the abstract idea of paying renewal fees. Receiving and paying fees is a routine, conventional practice. That the information and renewal fees relate to domain names may add a “degree of particularity” to the claims, but does not provide an inventive concept. See Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014) (“Although certain additional limitations, such as consulting an activity log, add a degree of particularity, the concept embodied by the majority of the limitations describes only the abstract idea of showing an advertisement before delivering free content.”). Furthermore, each of the information gathering and fee paying steps are themselves abstract ideas. For example, using an intermediary to receive funding from users via the internet is an abstract idea. See, e.g., Kickstarter, Inc. v. Fan Funded, LLC, No. 11 CIV. 6909 KPF, 2015 WL 3947178, at *1 (S.D.N.Y. June 29, 2015), aff’d, 654 F. App’x 481 (Fed. Cir. 2016) (“system for marketing and funding one or more projects” including server for receiving and registering information in a database held ineligible); Paying fees at a particular time for non-technical reasons is also an abstract idea. See CMG Fin. Servs., Inc. v. Pac. Trust Bank, F.S.B., 50 F. Supp. 3d 1306, 1325 (C.D. Cal. 2014), aff’d sub nom. CMG Fin. Servs., Inc. v. Pac. Trust Bank, 616 F. App’x 420 (Fed. Cir. 2015) (“abstract idea of a mortgagee paying down a mortgage early when funds are available and borrowing funds as needed to reduce the overall interest charged by the mortgage.”). Appeal 2015-006969 Application 13/472,246 9 See also LendingTree, LLC v. Zillow, Inc., No. 2014-1435, 2016 WL 3974203 (Fed. Cir. July 25, 2016) (internet-based loan-application clearinghouse for receiving loan offers from a “plurality of lending institutions” using “a filter comprising [a] plurality of selection criteria” and receiving a decision from the user held to be an abstract idea). Merely combining several abstract ideas does not render the combination any less abstract. Cf. Shortridge v. Found. Constr. Payroll Serv., LLC, No. 14-CV-04850-JCS, 2015 WL 1739256, *11 (N.D. Cal. Apr. 14, 2015), aff’d, No. 2015-1898, 2016 WL 3742816 (Fed. Cir. July 13, 2016). Finally, we note that claim 34 calls for “a server network device” and “a database.” But any general-purpose computer and database available at the time the application was filed would have satisfied these limitations. The Specification supports that view. See, e.g., Spec. 12 (“a processing system with at least one high speed Central Processing Unit (‘CPU’) and memory”). “[T]he mere recitation of a generic computer cannot transform a patent-ineligible abstract idea into a patent-eligible invention. Stating an abstract idea ‘while adding the words ‘apply it’’ is not enough for patent eligibility.” Alice, 134 S. Ct. at 2358. The method of independent claim 58 contains similar limitations as claim 34, with two additional “comparing” steps. Comparing information is also an abstract idea. See Blue Spike, LLC v. Google Inc., 2015 WL 5260506 (N.D. Cal. 2015), aff’d, No. 2016-1054, 2016 WL 5956746 (Mem) (Fed. Cir. 2016). Appeal 2015-006969 Application 13/472,246 10 Thus, “the claims at issue amount to ‘nothing significantly more’ than an instruction to apply the abstract idea . . . using some unspecified, generic computer.” Alice, 134 S. Ct. at 2360 (citing Mayo, 132 S. Ct. at 1298). We reach the same conclusion as to apparatus claims 49–53. As in Alice, “[t]he method claims recite the abstract idea implemented on a generic computer; the system claims recite a handful of generic computer components configured to implement the same idea.” Id. Therefore, we enter a new ground of rejection of claims 34–53 and 55–58 under 35 U.S.C. § 101. CONCLUSIONS The rejection of claims 34–53 and 55–58 under 35 U.S.C. § 112, first paragraph is reversed. The rejection of claims 34–53 and 55–58 under 35 U.S.C. § 103(a) as unpatentable over Fellman, Loeb, Tonga, and Times-Colonist is reversed. Claims 34–53 and 55–58 are newly rejected under 35 U.S.C. § 101 as being directed to non-statutory subject matter. DECISION The decision of the Examiner to reject claims 34–53 and 55–58 is reversed. Claims 34–53 and 55–58 are newly rejected. NEW GROUND This decision contains a new ground of rejection pursuant to 37 C.F.R. Appeal 2015-006969 Application 13/472,246 11 § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” 37 C.F.R. § 41.50(b) also provides that the Appellant(s), WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the proceeding will be remanded to the examiner . . . . (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same record . . . . REVERSED; 37 C.F.R. § 41.50(b)